Complainant is The Chemours Company, LLC of Wilmington, Delaware, United States of America (“United States”), represented by Potter Anderson & Corroon, LLP, United States.
Respondent is Contact Privacy Inc. Customer 1241584672 of Toronto, Canada / Name Redacted1/ . 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Google LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2019. On April 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 8, 2019, 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 and contact information in the Complaint. The Center sent an email communication to Complainant on April 10, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 15, 2019.
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 Respondent of the Complaint, and the proceedings commenced on April 17, 2019. On April 19, 2019, the named individual Respondent sent an email to the Center, advising that it was not responsible for the registration of the disputed domain name.
In accordance with the Rules, paragraph 5, the due date for Response was May 7, 2019. Respondent did not submit any response. Accordingly, the Center notified the Commencement of Panel Appointment Process on May 8, 2019.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on May 13, 2019. 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. 4. Factual Background
Complainant states that it is “a world leader in titanium technologies, fluoroproducts, and chemical solutions”; that it “has thousands of employees, with 45 manufacturing and laboratory sites worldwide, serving customers in over 130 countries” and that it “serves thousands of customers in key industries, including automotive, paints, plastics, electronics, energy, and telecommunications.”
Complainant states, and provides evidence to support, that it is the owner a federal trademark registration in the United States for the mark CHEMOURS, United States Reg. No. 5,163,745 (registered March 21, 2017) for use in connection with, inter alia, industrial chemicals (the “CHEMOURS Trademark”).
The Disputed Domain Name was created on March 25, 2019, and is being used, as described by Complainant, which provided an email as evidence in support thereof, “to impersonate an employee of the Complainant… to perpetrate a fraud on one of its customers, redirecting payment to itself of invoices due to Chemours.” 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the CHEMOURS Trademark because “the registrant introduced a minor misspelling of the mark by adding a second letter ‘r’ to spell ”; and the Disputed Domain Name is “phonetically and visually similar to the Chemours® mark, and is typical of a typosquatting domain name.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “[p]anels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “the Respondent used the disputed domain name to send several emails impersonating an employee of the Complainant to one of the Complainant’s customers in furtherance of a fraudulent scheme… attempt[ing] to induce such customers of Complainant to pay invoices due to Complainant to a bank account not registered to Complainant.” B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registration cited by Complainant, it is apparent that Complainant has rights in and to the CHEMOURS Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the CHEMOURS Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “chemourrs”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
The Disputed Domain Name contains the CHEMOURS Trademark in its entirety, adding only a second letter “r”. As set forth in section 1.7 of WIPO Overview 3.0, the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.” Overview 3.0 also says that “in 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 for purposes of UDRP standing.” Furthermore, numerous decisions under the Policy have found that duplicating a single letter in the middle of a disputed domain name does nothing to alleviate confusing similarity. See, e.g., Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty,WIPO Case No. D2009-0798 (“[t]he repeated letter does not significantly affect the appearance or pronunciation of the domain name, and when compared to the… trademark, it is a classic example of typosquatting”); Andrey Ternovskiy d/b/a Chatroulette v. Super Privacy Service c/o Dynadot,WIPO Case No. D2017-1238 (“this additional letter is barely perceptible and does nothing to detract from the confusing similarity between the Complainant’s mark and the Domain Name”); and R India Limited v. Domain Name Proxy, LLC/ Navigation Catalyst Systems, Inc.,WIPO Case No. D2010-1458 (“the addition of the extra letter… in the Disputed Domain Name and this [trademark] does not assist the Respondent in escaping a finding of confusing similarity”).
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “[p]anels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”
WIPO Overview 3.0, section 2.1, states: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Complainant specifically states that paragraph 4(b)(iv) of the Policy is applicable here because “Respondent’s use of the disputed domain name in emails that it sent to Complainant’s customers created a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation and endorsement of the Respondent’s email communication.” In support thereof, Complainant cites, inter alia, Syngenta Participations AG v. Guillaume Texier, Gobain ltd,WIPO Case No. D2017-1147. In that case, the complainant alleged that the disputed domain name was used “as an email address to send a request to an employee of the Complainant requesting urgent payment of monies claimed to be due on a false invoice. Currently, the disputed domain name does not resolve to an active website.” Accordingly, the panel there found that “on the balance of probabilities the disputed domain name was registered and is being used in bad faith for the purposes of unlawful phishing activity.” This Panel agrees with that conclusion and finds it applicable here.
Accordingly, the Panel finds that Complainant has proven the third element 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 be transferred to Complainant.
Douglas M. Isenberg
Sole Panelist
Date: May 20, 2019
1 1 On the basis of the case file presented to the Panel, it seems that Respondent is not the true holder and registrant of the disputed domain name. In light of a potential identity theft, the Panel, therefore, has redacted Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name and contact details of Respondent as listed in the WhoIs for the disputed domain name. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See ASOS plc. v. Name Redacted,WIPO Case No. D2017-1520; Banco Bradesco S.A. v. FAST12785241 Attn. B / Name Redacted, WIPO Case No. D2009-1788.
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