The Complainant is The Chemours Company, LLC, United States of America (“United States” or “US”), represented by Bates & Bates LLC, United States.
The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Luwemba Jay, Potflex, Uganda.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2021. On November 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 15, 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 the Complainant on November 23, 2021, 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 amendment to the Complaint on November 23, 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 the Respondent of the Complaint, and the proceedings commenced on December 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2022. The Center received informal communications from the Respondent on December 20, 2021 and January 4, 2022. Accordingly, on January 12, 2022, the Center commenced the Panel appointment process.
The Center appointed Nick J. Gardner as the sole panelist in this matter on January 25, 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 BackgroundThe Complainant is a US corporation and was formed in 2015 as a “spin-off” of the well-known US corporation E. I. du Pont de Nemours and Company. The mark CHEMOURS is a coined term with “chem” representing a reference to chemistry and “ours” a reference to “ours” in the name Nemours. The Complainant offers a wide range of chemicals products throughout the world.
The Complainant owns
The Complainant owns numerous trademark registrations for CHEMOURS throughout the world including, for example, United States Registration Number 5163745 that was registered on March 21, 2017. These trademarks are referred to collectively in this decision as the CHEMOURS trademark.
The Disputed Domain Name was registered on September 13, 2021. It resolves to a webpage which does not have any substantive content.
5. Parties’ Contentions A. ComplainantThe 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 combines it with the word “company”.
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.
Although the Disputed Domain Name is not active, the Respondent has no legitimate interest in it, particularly because “chemours” is a made-up word.
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, and its attempt to trade off the goodwill the Complainant has established in the CHEMOURS trademark.
B. RespondentNo formal Response has been filed. However, on December 20, 2021 the Respondent indicated it would attempt to get in touch with its client, who it claims owns the Disputed Domain Name, to seek more information about the present dispute.
Moreover, on January 4, 2022, the Center received an email from the Respondent that stated as follows:
“Greetings all,
We’ve been trying to get in touch with our client to whom the chemorouscompany.co domain belongs to and it’s all been in vain. Due to our lack of communication with the client we’ve come up to an agreement that the client clearly ignored the domain.
In this case we usually put up such domain names for sale to prevent further costs on to us incase it expires.
As a way forward we would like to inform you all that the domain name will be up for sale with immediate effect
Regards”
Preliminary Matters
The Panel also notes this is a case where one Respondent (“Privacy service provided by Withheld for Privacy ehf”) appears to be a privacy or proxy service.
The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
“Panel discretion
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case the Panel considers the substantive Respondent to be Luwemba Jay, Potflex, and references to the Respondent are to that person.
It may be the Respondent has an underlying client (see email of January 4, 2022, referred to above) but that does not affect the Panel’s reasoning.
Substantive Matters
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has rights in the CHEMOURS trademark. The Disputed Domain Name incorporates the CHEMOURS trademark in its entirety.
Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000‑0662). It is established that, where a mark is recognisable in the disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (WIPO Overview 3.0, section 1.7).
It is also established that the addition of a term (here “company”) to a disputed domain name does not prevent a finding of confusing similarity under the first element (WIPO Overview 3.0, section 1.8).
It is also well established that the country code Top-Level Domain (“ccTLD”), in this case “.co”, does not generally affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate InterestsThe Panel finds the CHEMOURS trademark is, on the evidence before the Panel, a term in which the Complainant has developed a significant reputation.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the CHEMOURS trademark. The Complainant has prior rights in the CHEMOURS trademark which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003‑0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds the Respondent does not have any rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad FaithThere is no evidence that the Respondent has made use of the Disputed Domain Name. The Panel however agrees with the Complainant that, given “chemours” is a coined term with no meaning except in relation to the Complainant, it is impossible to conceive any legitimate use the Respondent could have for the Disputed Domain Name, and finds it is most likely that the Respondent chose the Disputed Domain Name precisely because of the confusing similarity to Complainant’s CHEMOURS trademark. In the circumstances of this case, the Panel adopts the approach set out in the WIPO Overview 3.0, section 3.3, as follows:
“Can the ‘passive holding’ or non-use of a domain name support a finding of bad faith?
From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”.
Overall it does not generally matter that the Respondent has not as yet used the Disputed Domain Name. “Passive holding” can itself amount to bad faith registration and use where the holding involves a domain name deliberately chosen because of its association with the Complainant. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574, Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131, Westdev Limited v. Private Data,WIPO Case No. D2007-1903; Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393; Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273; Advance Magazine Publishers Inc. and Les Publications Conde Nast S.A. v. ChinaVogue.comWIPO Case No. D2005-0615.
In the present case, the Panel adopts this approach and notes in particular the Respondent’s failure to provide any evidence of actual or contemplated good-faith use. Accordingly, and applying the principles in the above noted UDRP decisions, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith.
Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
7. DecisionFor 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
Nick J Gardner
Sole Panelist
Date: February 8, 2022