The Chemours Company, LLC v Whois Privacy, Private by Design, LLC /

WIPO Case No. D2022-2909

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

The Chemours Company, LLC v. Whois Privacy, Private by Design, LLC /
Name Redacted

Case No. D2022-2909

1. The Parties

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

Bates & Bates LLC, United States.

Respondent is Whois Privacy, Private by Design, LLC / Name Redacted.[1]

[1] The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential

2. The Domain Name and Registrar

The disputed domain name <chemoursglobal.com> is registered with Porkbun LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2022. On August 8, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 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 and contact information in the Complaint. The Center sent an email communication to Complainant on August 9, 2022, 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 August 9, 2022.

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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 15, 2022. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2022. Respondent did not submit any response. The Center received communications from a third party on August 22, 2022, and on September 3, 2022. Accordingly, the Center notified the Parties that it would proceed to panel appointment on September 6, 2022.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on September 12, 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

Complainant is a global chemical company headquartered in the United States. It is the proprietor of numerous registrations for its CHEMOURS mark in countries around the world, including the following:

- European Union Trademark No. 012836805 for CHEMOURS (word mark), registered on February 16,
2015, for goods and services in classes 1, 2, 3, 4, 5, 9, 12, 16, 17, 19, 21, 22, 23, 24, 25, 37, 40, 42, and 44;

- United States Trademark Registration No. 5163745 for CHEMOURS (word mark), registered on March 21, 2017, for goods and services in classes 1, 2, 3, 4, 5, 9, 12, 16, 17, 19, 21, 22, 23, 24, 25, 37, 40, 42, and 44.

Complainant has registered several domain names reflecting its CHEMOURS mark, including

<chemours.com>.

The disputed domain name was registered on July 5, 2022. At the time of this Decision, it did not resolve to
an active website. The record contains Complainant’s statement that it previously redirected to
Complainant’s primary business website at <chemours.com>.

The record also contains correspondence from a third party with the Center stating that Respondent had appropriated the name of a former employee when registering the disputed domain name. The correspondence states that this person is not in any way connected to the disputed domain name.

5. Parties’ Contentions

A. Complainant

Complainant’s contentions may be summarized as follows:

Under the first element, Complainant states that it is a global chemical company that is a 2015 spin-off of the global chemical concern E.I. duPont de Nemours and Company, and that its CHEMOURS mark is an invented term referring to “chemistry” and to “Nemours” from its predecessor company. The disputed domain name incorporates Complainant’s CHEMOURS mark in its entirety, with the addition of a common word.

Under the second element, Complainant states that it has not authorized, licensed or otherwise permitted website at <chemours.com>.

Respondent to use its CHEMOURS mark. There is no business relationship between the Parties.

Under the third element, Complainant states that Respondent is using Complainant’s well-known
CHEMOURS mark in its entirety, has hidden its identity, is attempting to trade off Complainant’s goodwill in

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the CHEMOURS mark, and appears to be using the disputed domain name to impersonate Complainant by

submitting requests to third parties to purchase IT equipment purportedly on behalf of Complainant.

Complainant requests transfer of the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which

Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) Respondent has registered and is using the disputed domain name in bad faith.

Under paragraph 15(a) of the Rules, “[a] Panel shall 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”.

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the CHEMOURS mark
through registrations in the United States and international registrations. Complainant thereby satisfies the
threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO
Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section
1.2.1.

In comparing Complainant’s marks with the disputed domain names, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark. The disputed domain name reflects Complainant’s CHEMOURS mark in its entirety, followed by the dictionary term “global”. It is the consensus view of UDRP panels that, where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark. Moreover, where the relevant trademark is recognizable within the disputed domain names, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See WIPO Overview 3.0, sections 1.7 and 1.8.

It is the well-established view of UDRP panels that the generic Top-Level Domain (“gTLD”) “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).

Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the

Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:

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(i) before any notice to it of the dispute, respondent’s 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)          respondent has been commonly known by the domain name, even if it has acquired no trademark or

service mark rights; or

(iii) 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.

The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain name
nor is using the CHEMOURS mark with the permission of Complainant. The nature of the disputed domain
name, which reflects Complainant’s mark in its entirety together with a descriptive term, cannot constitute fair
use since it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See,
for example, Iflscience Limited v. Domains By Proxy LLC / Dr Chauncey Siemens, WIPO Case No.
D2016-0909; B&B Hotels v. WhoisGuard Protected, WhoisGuard, Inc. / Soro Wonna, WIPO Case No.

D2020-2837. See also WIPO Overview 3.0, section 2.5.1.

The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that
Respondent has no rights or legitimate interests in the disputed domain name.

Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.

Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. The circumstances of the case prevent the inference of rights nor legitimate interests on the part of Respondent. The record reflects that the disputed domain name was used by Respondent to impersonate Complainant in an attempt to defraud third parties. Such use can never confer rights or legitimate interests. See WIPO Overview 3.0, section 2.13.1.

Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that Complainant has demonstrated Respondent’s bad faith registration and use of the disputed domain name. Complainant’s rights in its CHEMOURS marks predate by several years the registration of the disputed domain name. The disputed domain name reflects Complainant’s distinctive CHEMOURS mark in its entirety, together with the dictionary term “global”. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith on the part of Respondent. See WIPO Overview 3.0, section 3.1.4.

In this case, the record shows that Respondent deliberately targeted Complainant and its CHEMOURS mark.
The Panel finds the evidence in the record establishes that Respondent used the disputed domain name in
an attempt to pass itself off as Complainant to perpetuate what appears to be a fraudulent scheme by
causing third parties to deliver IT equipment to it, presumably to be invoiced to Complainant. Moreover,
Respondent appears to have appropriated the identity of an employee of an unrelated entity when
registering the disputed domain name. The Panel finds that Respondent thereby attempted to impersonate
Complainant for commercial gain, indicating bad faith in registration and use of the disputed domain name.
See WIPO Overview 3.0, section 3.2.1.

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Respondent has provided no evidence of actual or contemplated good-faith use of the disputed domain name and the Panel does not find any such use plausible.

The Panel therefore finds that Complainant has established the third element under paragraph 4(a) 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 <chemoursglobal.com> be transferred to Complainant.

/Ingrīda Kariņa-Bērziņa/

Ingrīda Kariņa-Bērziņa

Sole Panelist
Date: September 25, 2022

identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this
decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent.
The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated
Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-
12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.