The Complainant is The Chemours Company FC, LLC, United States of America (“United States”), represented by Bates & Bates LLM, United States.
The Respondent is Whois Privacy Protection Foundation, Netherlands / Phillip Moo, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2020. On April 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 2020, 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 the Complainant on April 10, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 15, 2020. 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 the Respondent of the Complaint, and the proceedings commenced on April 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2020. The Center appointed Colin T. O’Brien as the sole panelist in this matter on May 13, 2020. 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 The Complainant is a 2015 spin-off of E. I. du Pont de Nemours and Company and is the owner of the CHEMOURS mark. The CHEMOURS mark is a coined term of the Complainant (CHEM is a reference to chemistry and OURS is a reference to ours in E. I. du Pont de Nemours). The Complainant offers a wide range of chemicals products that are offered throughout the world. The Complainant owns over 25 domain names wholly encompassing the CHEMOURS mark including The Complainant owns numerous trademark registrations throughout the world including United States Registration Number 5163745 for CHEMOURS that was applied for on May 1, 2014 and registered on March 21, 2017. The disputed domain name was registered on August 22, 2019 and is currently inactive. 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar, tarnishes and dilutes the Complainant’s CHEMOURS trademark. The disputed domain name incorporates the Complainant’s CHEMOURS trademark in its entirety and the “icu” portion of the disputed domain name should be disregarded when comparing it with the Complainant’s CHEMOURS trademark. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its CHEMOURS trademark, and the Complainant does not have any type of business relationship with the Respondent. The Respondent registered the domain name over 6 years after the Complainant registered The Respondent registered the disputed domain name in bad faith, as evidenced by the fact that it used the Complainant’s well-known CHEMOURS trademark in its entirety, hid its true identity, and is attempting to trade off the goodwill the Complainant has established in the CHEMOURS trademark. The Respondent has not and cannot make any legitimate use of the disputed domain name given the Complainant’s well-known, coined and established trademark. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has demonstrated it owns registered trademark rights in the CHEMOURS mark. The disputed domain name reproduces the CHEMOURS mark in its entirety. The addition of “.icu” does not avoid a finding of confusing similarity. Accordingly, the disputed domain name is confusingly similar to a mark in which the Complainant has rights. B. Rights or Legitimate Interests The Complainant has presented a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and has not at any time been commonly known by the disputed domain name. The fact that the Respondent obtained the disputed domain name five years (not six as asserted in the Complaint) after Complainant had begun using the coined CHEMOURS mark on a worldwide basis indicates that the Respondent sought to obtain piggy-back on the CHEMOURS mark either to make money off of PPC advertising or to make a windfall by selling the disputed domain name to the only legitimate owner namely the Complainant. After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Here, the Respondent has provided no evidence of any rights or legitimate interests in the disputed domain name rather the evidence suggests that it was registered to make an undue profit based on the Complainant’s rights. See, e.g., Bottega Veneta SA v. ZhaoJiafei,WIPO Case No. D2013-1556. In the absence of any evidence rebutting the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain name, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The disputed domain name was registered five years after the Complainant first registered and used its CHEMOURS trademark. The evidence on the record provided by the Complainant with respect to the extent of use of its unique CHEMOURS trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain name was registered, the Respondent most likely knew of the Complainant’s CHEMOURS mark, and knew that it had no rights or legitimate interests in the disputed domain name. The Respondent’s registration of the disputed domain name which incorporates the Complainant’s well-known CHEMOURS trademark under a concealed identity and its refusal to answer the Complaint clearly indicates to the Panel that the disputed domain name was registered and used in bad faith. See, “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc,.WIPO Case No. D2017-0246; and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. 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 Colin T. O'Brien
Sole Panelist
Date: May 27, 2020
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