The Chemours Company FC, LLC v shubham chauhan

WIPO Case No. D2022-3414

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

The Chemours Company FC, LLC v. shubham chauhan,
Sangam Electronics Industry

Case No. D2022-3414

1. The Parties

The Complainant is The Chemours Company FC, LLC, United States of America (“United States”),

represented by Bates & Bates LLC, United States.

The Respondent is shubham chauhan, Sangam Electronics Industry, India.

2. The Domain Name and Registrar

The disputed domain name <teflonwiresandcables.com> is registered with GoDaddy.com, LLC

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14,

2022. On September 14, 2022, the Center transmitted by email to the Registrar a request for registrar the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 19, 2022. The Respondent sent informal communications the Center on September 29, 2022. The Center sent a possible settlement email to the parties to explore settlement options on November 2, 2022. The Complainant requested suspension of proceeding on November 2, 2022. The Center suspended the proceedings on November 3, 2022. The Respondent sent an informal communication to the Center on December 6, 2022. The Complainant requested an extension of the suspension of proceedings on December 7, 2022. The Center granted the requested extension to suspension on December 8, 2022. On January 3, 2023, the Complainant requested the reinstitution of proceedings, the Center reinstituted the proceeding on January 6, 2023.

verification in connection with the disputed domain name. On September 14, 2022, 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 (Registration Private, Domains By Proxy, LLC)
and contact information in the Complaint. The Center sent an email communication to the Complainant on

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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 September 23, 2022. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2022. The Respondent did not submit any response. Accordingly, the Center proceeded to panel appointment on January 6, 2023.

The Center appointed Tobias Malte Müller as the sole panelist in this matter on January 16, 2023. 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

It results from the Complainant’s undisputed allegations that the Complainant is a global chemical company

based in the United States who offers TEFLON branded products throughout the world. The Complainant
undisputedly submits, that TEFLON trademark has become a familiar household name, recognized
worldwide for the superior nonstick properties associated with its use as a coating on cookware and as a soil
and stain repellant for fabrics and textile products. Consequently, TEFLON coatings are used on products

ranging from cookware, apparel, automotive, home and garden, eyeglass lenses to wires and cables.

The Complaint is based amongst others on the following word trademarks, applied before the date of
registration of the disputed domain name and consisting of the term TEFLON, e.g. European Union Trade
Mark No. 000432120 (registered on April 7, 1999, for goods in classes 1, 2, 3, 4, 10, 11, 12, 16, 17, 18, 19,

20, 21, 22, 23, 24, 25, and 27).

According to the Registrar’s verification response, the Respondent registered the disputed domain name on

May 22, 2022. The language of the registration agreement at the time of registration was English.

It results from the undisputed evidence provided by the Complainant that the disputed domain name resolves to a parking website showing pay-per-click (PPC) links.

5. Parties’ Contentions

A. Complainant

Firstly, the Complainant asserts that the disputed domain name is confusingly similar to its TEFLON trademarks, since it entirely captures said mark. The addition of common words does not distinguish a

domain name from a complainant’s mark or preclude a finding of confusing similarity.

Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Complainant has not authorized the Respondent to register and use a confusingly similar domain name that tarnishes and dilutes the TEFLON trademark. Finally, the Respondent created the disputed domain name, which is confusingly similar to the TEFLON trademarks, over twenty

years after the Complainant created its own domain names “teflon.com” and “teflon.net”.

Thirdly, the Respondent’s registration and use of the disputed domain name constitutes – in the

Complainant’s view – bad faith under several aspects: (1) it is using the Complainant well-known TEFLON

trademark in its entirety, (2) it has hidden its true identity, and (3) it is attempting to trade off the goodwill the
Complainant has established in the TEFLON trademark.

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B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, the Respondent sent informal

emails to the Center seeking to settle the dispute and to transfer the disputed domain name to the

Complainant. The Respondent stopped answering the Complainant.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and

documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that

it deems applicable”.

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:

(i)     the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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 will proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

According to the Complainant’s contentions supported by undisputed evidence, it is the owner of a large

portfolio of trademark registrations consisting of the verbal element TELFON, e.g. European Union Trade

Mark No. 000432120 registered on April 7, 1999.

Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s

trademark for purposes of the first element where the relevant trademark is recognizable within the disputed
domain name. Under such circumstances, the addition of other terms (whether descriptive, geographical,
pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first

element (cf. section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third

Edition (“WIPO Overview 3.0”)). This Panel shares the same view and notes that the disputed domain name

contains the Complainant’s registered trademark TEFLON, which is placed at the beginning of the disputed
domain name. In particular, the Panel considers the addition of the terms “wires” and “cables” to the

Complainant’s trademark in the disputed domain name would not prevent a finding of confusing similarity

under the first element of the UDRP. The Panel has no doubts that in a side-by-side comparison of the

disputed domain name and the relevant trademark TEFLON, the Complainant’s mark remains clearly

recognizable within the disputed domain name.

Finally, the generic Top-Level Domain (“gTLD”) “.com” of the disputed domain name may be disregarded

under the first element confusing similarity test (see section 1.11.1 of the WIPO Overview 3.0).

In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

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B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to

be proved, shall demonstrate the Respondent’s rights or legitimate interests to a disputed domain name. In

the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima

facie case that none of these circumstances are found in the case at hand and, therefore, that the

Respondent lacks rights or legitimate interests in the disputed domain name.

It results from the records that the disputed domain name resolves to a website featuring PPC advertisement
links. Such use cannot be qualified a bona fide offering of goods or services in accordance with
paragraph 4(c)(i) of the Policy. In fact, this Panel shares the view of previous panels holding that the use of

a domain name to host a parking page comprising PPC links does not represent a bona fide offering where

such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark or otherwise

mislead Internet users (see section 2.9 of the WIPO Overview 3.0). In addition, the Respondent did not

submit any evidence of bona fide preparations to use the disputed domain name. In particular, the

Complainant’s uncontested allegations demonstrate that it has not authorized the Respondent’s use of the

TEFLON trademarks for registering the disputed domain name.

Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.

Finally, there is no evidence in the records showing that the Respondent might be making a noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue pursuant to paragraph 4(c)(iii) of the Policy. In fact, as

underlined here above, the disputed domain name is used for a parking page with commercial links. Such

use is commercial. Therefore, the Panel holds that such commercial use cannot – from the outset – be

considered a legitimate, noncommercial or fair use of the disputed domain name, without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark. In addition,
the Panel is satisfied that the registered trademark TEFLON is distinctive so that it is unlikely that the
Respondent wanted to fairly use the disputed domain name consisting of this term.

It is acknowledged that once the Panel finds a prima facie case has been established, the burden of production under the second element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, in particular, but without limitation, be evidence

of the disputed domain name’s registration and use in bad faith.

One of those circumstances are those specified in paragraph 4(b)(iv), i.e., where the domain name is used to intentionally attempt to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.

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In the Panel’s view, the Respondent has intentionally registered the disputed domain name which contains

the Complainant’s distinctive trademark TEFLON plus terms which are applicable to the Complainant’s

activity. By the time the disputed domain name was registered, it is therefore unlikely that the Respondent
did not have knowledge of the Complainant and its mark TEFLON and its business activity.

The Complainant also provided evidence that the Respondent is using the disputed domain name to lead to a website featuring PPC-advertisement links. This is indicative of bad faith, even if the webpage is configured automatically by the registrar or any other party. Indeed, particularly with respect to

“automatically” generated PPC-links, previous UDRP panels have held that a respondent cannot disclaim

responsibility for content appearing on the website associated with its domain name (nor would such links
ipso facto vest the respondent with rights or legitimate interests). Neither the fact that such links are
generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the
respondent itself may not have directly profited, would by itself prevent a finding of bad faith (see section 3.5

of WIPO Overview 3.0).

These facts confirm that the disputed domain name is used to intentionally attempt to attract, for commercial

gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s

mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Finally, the further circumstances surrounding the disputed domain name’s registration and use confirm the

findings that the Respondent has registered and is using the disputed domain name in bad faith:

i.         the distinctiveness of the trademark TEFLON which has existed since decades;

ii.         the trademark TEFLON is fully and identically incorporated in the disputed domain name;

iii.        the Respondent not replying to the Complainant’s contentions with conceivable explanation of its

behavior so that no legitimate use of the disputed domain name by the Respondent is actually
conceivable for the Panel; and

iv.        the Respondent using a privacy service to hide its identity.

In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to 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 <teflonwiresandcables.com> be transferred to the Complainant.

/Tobias Malte Müller/

Tobias Malte Müller

Sole Panelist
Date: January 30, 2023