Textile Rubber and Chemical Company, Inc. v olas logs

WIPO Case No. D2024-4027

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Textile Rubber and Chemical Company, Inc. v. olas logs

Case No. D2024-4027

1. The Parties

The Complainant is Textile Rubber and Chemical Company, Inc., United States of America (“United States”), represented by Meunier Carlin & Curfman LLC, United States.

The Respondent is olas logs, United States.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2024. On October 2, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 2, 2024, 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 (JOHN DOE) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 4, 2024, 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 October 9, 2024.

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 October 9, 2024. In accordance with the Rules, paragraph
5, the due date for Response was October 29, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on October 30, 2024.

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The Center appointed Evan D. Brown as the sole panelist in this matter on November 4, 2024. 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 in the business of distributing industrial chemicals. It owns the mark TEXTILE RUBBER use of the mark in commerce.
& CHEMICAL COMPANY, which it has used since at least as early as 1956 and for which it enjoys the

benefits of registration in the United States (Registration No. 4,551,147, registered on June 17, 2014). The

According to the WhoIs information, the disputed domain name was registered on April 24, 2024. The employees while sending and receiving email messages, in an apparent attempt to commit financial fraud.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the domain name; and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of 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 the Complainant has rights, (ii) the 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 finds that all three of these elements have been met in this case.

A. Identical or Confusingly Similar

This first element functions primarily as a standing requirement. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the

complainant’s trademark and the disputed domain name. Id. This element requires the Panel to consider
two issues: first, whether the Complainant has rights in a relevant mark; and second, whether the disputed
domain name is identical or confusingly similar to that mark.

The Complainant asserts common law trademark rights in the mark TRCC based on its long-standing, exclusive use of the mark as a distinctive identifier of its chemical manufacturing and distributorship services. Operating globally with facilities in nine countries and a substantial United States presence, the Complainant claims that it has used the domain name <trcc.com> since 1996 to market and promote its goods and services and began prominently incorporating the TRCC mark in its advertising and branding materials by at least March 2010. Over the past 14 years, according to the Complainant, the TRCC mark has been

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continuously featured on the Complainant’s website, advertising materials, and delivery trucks, building
significant goodwill and public recognition. The Complainant argues that this exclusive and extensive use
has established TRCC as a distinctive identifier, akin to other cases where panels recognized common law
rights in marks based on similar evidence of prolonged and exclusive use. Thus, the Complainant contends
it has protectable common law rights in the TRCC mark. The Panel agrees. Furthermore, the Panel notes
the Respondent is shown to have been targeting the Complainant, reproducing the Complainant’s full logo in
the email communications sent through an email address related to the disputed domain name, in an attempt
to pass off as coming from the Complainant. The Panel considers that such use supports the Panel’s finding
that the Complainant’s TRCC mark has achieved significance as a source identifier for the purposes of the
Policy. See WIPO Overview 3.0, section 1.3.

The disputed domain name incorporates the TRCC mark in its entirety along with the letter “i”, which does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s TRCC mark. See WIPO Overview 3.0, section 1.8. The TRCC mark remains recognizable for a showing of confusing similarity under the Policy.

For these reasons, the Panel finds that the Complainant has satisfied the first element under the Policy.

B. Rights or Legitimate Interests

The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production of demonstrating rights or legitimate interests shifts to the Respondent (with the burden of proof always remaining with the Complainant). See WIPO Overview 3.0, section 2.1; AXA SA v. Huade Wang, WIPO Case No. D2022-1289.

On this point, the Complainant asserts, among other things, that: (1) the Respondent holds no trademark or other intellectual property rights concerning the mark TRCCI, (2) the Complainant has not licensed or otherwise authorized the Respondent to use the TRCC trademark, (3) the Respondent is not commonly known by the disputed domain name, and (4) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Instead, the Respondent has used the disputed domain name to send one or more email messages in an attempt to impersonate the Complainant and thereby engage in fraudulent conduct.

The Panel finds that the Complainant has made the required prima facie showing. The Respondent has not presented evidence to overcome this prima facie showing. And nothing in the record otherwise tilts the balance in the Respondent’s favor. The use of a domain name for illegal activity such as impersonation or passing off, can never confer rights or legitimate interests on a respondent. Société des Produits Nestlé S.A. v. Great Homes, jobs-nestle.com, WIPO Case No. D2024-2911; WIPO Overview 3.0, section 2.13.1.

Accordingly, the Panel finds that the Complainant has established this second element under the Policy.

C. Registered and Used in Bad Faith

In the circumstances of this case, particularly where it has been shown that the Respondent used the disputed domain name to imitate the Complainant, it is clear that the Respondent targeted the Complainant when it registered the disputed domain name. Such a showing is sufficient here to establish bad faith registration of the disputed domain name. See Signify Health, LLC v. Sasha still, WIPO Case No. D2023-1208. Bad faith use is clear from the Respondent’s activities of using the disputed domain name to send fraudulent email messages. Id. For these reasons, the Panel finds that the Complainant has successfully met this third UDRP element.

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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 <trcci.com> be transferred to the Complainant.

/Evan D. Brown/
Evan D. Brown
Sole Panelist
Date: November 18, 2024