WIPO Domain Name Decision D2021-3849 for chermours.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The Chemours Company, LLC v. Privacy service provided by Withheld for Privacy ehf / CARLOS GOMEZ Case No. D2021-3849 1. The Parties

Complainant is The Chemours Company, LLC, United States of America (“United States” or “U.S.”) represented by Bates & Bates LLC, United States.

Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Carlos Gomez, United States.

2. The Domain Name and Registrar

The disputed domain name is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2021. On November 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 18, 2021, 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 November 19, 2021, providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 22, 2021.

The Center verified that the Complaint together with the amendment to the 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 November 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 14, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 15, 2021.

The Center appointed Scott Austin as the sole panelist in this matter on January 4, 2022. 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 following facts appear from the Complaint (as amended) and its Annexes.

Complainant, The Chemours Company, LLC, is a global chemical company that offers a wide range of chemical products throughout the world and is a 2015 spin-off of E. I. du Pont de Nemours and Company (“DuPont”). Complainant operates its business and provides its chemical products and related services under the name and trademark CHEMOURS (the “CHEMOURS Mark”), a coined term which combines “chem” for chemistry with “ours” taken from the final four letters in the name E. I. du Pont de Nemours.

Complainant has secured ownership of a large number of trademark registrations for the CHEMOURS Mark across various jurisdictions worldwide, including but not limited to the following:

United States Trademark Registration No. 5163745, CHEMOURS, registered on March 21, 2017, for a range of industrial chemical products and materials, as well as chemical treatment and engineering services covering international classes 1-5, 9, 12, 16, 17, 19, 21-25, 37, 40, 42, and 44, and claiming a priority date of April 16, 2014.

Iceland Trademark Registration No. V0092653, CHEMOURS, filed April 16, 2014, for a range of industrial chemical products and materials, as well as chemical treatment, chemical engineering and other services covering multiple international classes, registered on June 30, 2015.

Complainant is also the owner of over 25 domain names, as well as numerous country-level domain names incorporating the CHEMOURS Mark. Since March 17, 2014, Complainant has owned the domain name , from which Complainant operates its official website at “www.chemours.com” (the “CHEMOURS Mark Official Website”), offering information on Complainant’s global operations providing a range of chemical products and services throughout the world.

The disputed domain name was registered on September 23, 2021, and as of the filing of the Complaint resolved to a parking page displaying pay-per-click (“PPC”) advertising.

5. Parties’ Contentions A. Complainant

Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

There are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the present dispute based upon the Complaint (as amended), notwithstanding the failure of any person to lodge a substantive formal Response in compliance with the Rules. Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.

Where no substantive Response is filed, however, Complainant must still make out its case in all respects under paragraph 4(a) of the Policy. To determine which party prevails, the Panel must decide whether Complainant has demonstrated that all the elements listed in paragraph 4(a) of the Policy have been satisfied:

(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.

The Panel will address each of these requirements in turn.

The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has demonstrated its rights because it has shown that it is the holder of multiple valid and subsisting trademark registrations for the CHEMOURS Mark. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657.

Prior UDRP panels have held “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.”. See WIPO Overview 3.0, section 1.7; see also, Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.

The Panel finds here that the disputed domain name wholly incorporates Complainant’s registered CHEMOURS Mark and inserts an additional letter “r” immediately before the letter “m” in the Mark. This added letter does not significantly affect the appearance or pronunciation of the domain name. The disputed domain name, therefor, is essentially identical to Complainant’s official domain name and encompasses its registered CHEMOURS Mark adding only a letter “r” which as located could be easily overlooked or considered by consumers as a “typo”.

Prior UDRP panels have found a respondent’s intentional registering of an obvious misspelling of a complainant’s trademark to be within the conduct commonly referred to as typosquatting, prohibited under the Policy, in which a respondent registers a domain name in order to take advantage of typing errors eventually made by Internet users seeking the complainant’s commercial website. See Volkswagen Group of America, Inc. v. Above.com Domain Privacy / Shu Lin, WIPO Case No. D2018-0432.

Prior UDRP panels have also found a difference of only one letter between a disputed domain name and a complainant’s mark cannot prevent a finding of confusing similarity. See, Philip Morris USA Inc. v. Compsys Domain / Compsys Domain Solutions Private Limited, WIPO Case No. D2017-2395 (domain name adding “r” for misspelling of trademark MARLBORO found confusingly similar).

Finally, prior UDRP panels have found that the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.co”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Accordingly, the TLD “.com” does not avoid a finding of confusing similarity. See WIPO Overview 3.0, section 1.11; see also Research in Motion Limited v thamer Ahmed Alfarshooti,WIPO Case No. D2012-1146.

Complainant’s CHEMOURS Mark is readily recognizable as incorporated in its entirety into the disputed domain name and for that reason the Panel finds the disputed domain name confusingly similar to the CHEMOURS Mark in which Complainant has rights.

Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Respondent is in default and thus has not attempted to come forward to show any rights or legitimate interests in the disputed domain name under the Policy at paragraph 4(c).

Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, Complainant asserts that it has not authorized, licensed, or permitted Respondent to use its CHEMOURS Mark or any confusingly similar mark in a domain name or otherwise. Complainant also asserts it does not have any business relationship or affiliation with Respondent.

Second, Complainant shows Respondent is not commonly known by the disputed domain name because the original Respondent based on the WhoIs record submitted with the Complaint is “Privacy service provided by Withheld for Privacy ehf”. After the filing of the Complaint, the Registrar disclosed the underlying registrant, “Carlos Gomez”, and the Complaint was amended to include this registrant as Respondent. In this proceeding, neither the original nor the subsequently disclosed Respondent name bears any resemblance to the disputed domain name. Based on these facts, combined with the lack of evidence in the record to suggest otherwise, this Panel finds that Respondent is not commonly known by the disputed domain name or any variation thereof pursuant to Policy paragraph 4(c)(ii).

It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to a complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that a complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC,WIPO Case No. D2007-1857.

The Panel notes that the present record provides no evidence to demonstrate Respondent’s intent to use or to make preparations to use the domain name in connection with a bona fide offering of goods or services. Indeed, Complainant shows that at the time of filing the complaint the disputed domain name resolved to a PPC page. Respondent’s use of the disputed domain name to resolve to a parking page displaying pay per click advertising does not represent a bona fide use of the disputed domain name. See WIPO Overview 3.0, section 2.9.

Furthermore, prior UDRP panels have held that domain names that are nearly identical to a complainant’s trademark carry a risk of implied affiliation, and that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See WIPO Overview 3.0, section 2.5.1. In this case, the Panel finds that the disputed domain name is almost identical to Complainant’s CHEMOURS Mark and thus misleads Internet users as to its affiliation with Complainant.

In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any argument or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain name and that Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that because Respondent has created a domain name that is confusingly similar to Complainant’s CHEMOURS Mark, as well as its domain, as found in section 6A above it is implausible to believe that Respondent did not have actual knowledge of Complainant’s widely known, globally used mark when it registered its confusingly similar domain name. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See, WIPO Overview 3.0, section 3.1.4.

The Panel also notes here additional factors under section 3.1.4 and its cases from which the Panel may infer bad faith registration: (i) Respondent has concealed its identity via a privacy service. (ii) Respondent’s intentional registering of an obvious misspelling of complainant’s trademark incorporating the letter “r” in the disputed domain as a “typo” inserted into both Complainant’s CHEMOURS Mark and official domain name to take advantage of typing errors eventually made by Internet users seeking Complainant’s commercial website, (iii) Complainant’s official website for Complainant’s industrial chemical products and services is accessed at “www.chemours.com”, a strikingly similar string, which suggests Respondent targeted Complainant’s well known CHEMOURS Mark when it picked the disputed domain name inserting only a single letter’s difference to create the disputed domain name , (iv) the lack of Respondent’s rights to or legitimate interests in the disputed domain name as found in Section 6B above, and (v) Respondent’s registration of the disputed domain name to create a false affiliation with Complainant for Respondent’s commercial gain, vis-à-vis click-through revenue received from the PPC links found on the website to which the disputed domain name resolves. Given the circumstances of this case, such a showing is sufficient to establish bad faith registration and use. See, WIPO Overview 3.0, section 3.2.1; see also Kimberly-Clark Worldwide, Inc. v. Domains By Proxy, LLC,WIPO Case No. D2017-1474.

For these reasons, the Panel finds bad faith registration and use, and Complainant has met its burden under paragraph 4(a)(iii) 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.

Scott R. Austin
Sole Panelist
Date: January 18, 2022

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