Emerson Electric Co. v. Mack COX
Claim Number: FA2005001895610
Complainant is Emerson Electric Co. (“Complainant”), Missouri, United States. Respondent is Mack COX (“Respondent”), Alabama, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emerson-electrics1.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 11, 2020; the Forum received payment on May 11, 2020.
On May 12, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <emerson-electrics1.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 13, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@emerson-electrics1.com.
Also, on May 13, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 3, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges that the disputed domain name is identical or confusingly similar to the EMERSON ELECTRIC and EMERSON trademarks in which Complainant has rights by virtue of its ownership of the trademark registrations described below and by its long and extensive use of the marks in its engineering business since it was established in 1890 in St. Louis, Missouri (USA).
Complainant claims a strong international reputation and goodwill in the EMERSON and EMERSON ELECTRIC marks because it has grown to become a globally recognized engineering company with approximately 90,000 employees and 200 manufacturing locations worldwide.
Complainant’s main website at <emerson.com> attracted a total of 1.27 million unique visitors in the period from July to December 2019. Alexa.com ranks the Complainant's website 25,781st globally and 9,673rd in the United States. Complainant is also the owner of the domain name <emersonelectric.com> which was registered on November 21, 1996.
Complainant submits that the disputed domain name incorporates its EMERSON mark in its entirety and is also confusingly similar to its EMERSON ELECTRIC trademark as varies only by the addition of the letter "s" and the number "1" at the end of the same.
Complainant adds that the addition of a hyphen does nothing to distinguish the disputed domain name from Complainant's trademark. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 0094321 (Forum Apr. 24, 2000) (Finding that punctuation is not significant in determining the similarity of a domain name and mark).
Complainant adds that when comparing the disputed domain name and Complainant's trademarks, the top-level suffix of the disputed domain name may properly be considered in assessing and determining confusing similarity between the disputed domain name and Complainant's trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name submitting that Respondent is not commonly known by the disputed domain name as pertinent WHOIS information identifies him as "Mack COX" which does not resemble the disputed domain name in any manner.
Complainant adds that it has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s EMERSON or EMERSON ELECTRICS marks.
Complainant further argues that Respondent's use of the disputed domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use.
In this regard, Complainant refers to correspondence exhibited in an annex to the Complaint, which shows an email, sent from the address <info@(disputed_domain_name)>, purporting to come from Complainant, requesting that the recipient provide a price quotation for specified products.
Complainant argues that the exhibited email illustrates an attempt by Respondent to pass himself off as Complainant in an attempt to 'phish' sensitive information from the general public. Complainant submits that such use cannot be a bona fide use or legitimate noncommercial or fair use of the domain name. See Century 21 Real Estate LLC v. David Stevens, FA 1456741 (Forum Sept. 12, 2012) (finding no bona fide offering of goods or services where Respondent used the domain name to pose as Complainant through an e-mail address associated with the disputed domain name to send internet users personal information questionnaires and job descriptions).
Complainant submits that the disputed domain name was registered and is being used in bad faith arguing that Respondent registered the disputed domain name on February 11, 2020, which is significantly after Complainant’s long-established use and registration of its EMERSON ELECTRIC and EMERSON trademarks.
Complainant argues that the registration of the disputed domain name must be considered a prototypical example of typosquatting by registering a domain name that simply adds a hyphen to the middle of a pluralized form of Complainant's EMERSON ELECTRIC trademark along with the number "l" at the end of the same.
Complainant submits that it is "not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant's brands at the time the disputed domain name was registered. See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
Furthermore, Complainant adds that the disputed domain name has been used for the purposes of launching a phishing attack as illustrated by the fraudulent emails adduced in the annex to the Complaint and referred to above.
In addition, Complainant refers to copies of WHOIS details of several domain name registrations held in Respondent’s name which misappropriate the trademarks of well-known brands and businesses. Complainant argues that this demonstrates that the Respondent is engaging in a pattern of cybersquatting/typosquatting, which is evidence of bad faith registration and use of the disputed domain name. See Armstrong Holdings, Inc. v. JAZ Assoc., FA 0095234 (Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others' famous and registered trademarks).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a is a diversified, global manufacturing and technology company and is the owner of the EMERSON trademark for which it holds a portfolio of registered trademarks including:
· United States registered service mark EMERSON ELECTRIC registration number 1,645,568, registered on May 21, 1991, on the Principal Register for services in international class 41;
· United States registered trademark EMERSON (stylized), registration number 0111931, registered on March 18, 1916 for goods in international classes 7, 9, 11, 12, 15;
· United States registered trademark EMERSON, registration number 1267606, registered on November 29, 1982 for good in international class 4;
· Canadian registered trademark EMERSON, registration number UCA2286, registered on January 25, 1934 in classes 07,09,11
· Canadian registered trademark EMERSON (and device), registration number TMA912925, registered on September 2, 2105 for goods in classes 6, 7, 9, 11 and 20;
· EUTM EMERSON registration number 000100651, registered on June 14, 1999 for goods in classes 4,6,7,8,9, 11, 12, 17 and 20.
Complainant has an established Internet presence and operates numerous websites. Its principal domain name <emerson.com> was registered on July 28, 1995 and its <emersonelectric.com> domain name was registered on November 20, 1996.
The disputed domain name <emerson-electrics1.com> was registered on February 1, 2020 as of the date of filing of the Complaint resolved to an inactive website but had been used as an email address to send emails to third parties falsely purporting to come from Complainant.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WHOIS and the information provided by the Registrar in response to the Forum’s request for verification of the registration details of the disputed domain name in the course of this proceeding.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has provided uncontested convincing evidence of its rights in the EMERSON ELECTRIC and EMERSON trademarks acquired by its ownership of the trademark registrations described below and its claimed extensive use of the marks in its engineering business.
The disputed domain name incorporates both Complainant’s EMERSON and EMERSON ELECTRIC trademarks in their entirety. It varies from the EMERSON ELECTRIC mark only by the addition the letter "s", the number "1", a hyphen and the generic Top-Level Domain (gTLD) <.com> extension.
The letter "s”, the number "1" and the hyphen have no significance or distinctive character in the context of the disputed domain name. The generic Top Level Domain (gTLD) <.com> extension would be viewed as a standard registration requirement and as such may be disregarded in the present context.
This Panel finds therefore that the disputed domain name is confusingly similar to Complainant’s EMERSON ELECTRIC and EMERSON trademarks and so Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name submitting that Respondent is not commonly known by the disputed domain name; that the pertinent Whois information identifies the Registrant as "Mack COX" which does not resemble the disputed domain name in any manner; that Complainant has not licensed, authorized, or permitted Respondent to register any domain name incorporating Complainant's EMERSON or EMERSON ELECTRICS marks; that the disputed domain name does not resolve to an active website but is being used to send fraudulent emails purporting to come from Complainant, which cannot constitute a bona fide offering of goods or services or a legitimate or fair use of the disputed domain name.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has shown that it has a long, well established reputation using the EMERSON ELECTRIC and EMERSON marks in the engineering business.
Given Complainant’s reputation and the similarity of the disputed domain name to Complainant’s EMERSON ELECTRIC mark, and its <emersonelectric.com> domain name that was registered on November 20, 1996, it is implausible that the registrant of the disputed domain name was unaware of Complainant, its name, marks and Internet domain names when the disputed domain name was registered. It is also implausible that the disputed domain name was registered for any reason other than to target Complainant and the reputation of its EMERSON ELECTRIC mark to cause confusion among Internet users.
The uncontested evidence adduced is that Respondent has caused, permitted or allowed the disputed domain name to be used to send phishing emails, purporting to come from Complainant which is clearly bad faith use.
Furthermore, the evidence adduced in the form of WHOIS details show that several domain names incorporating third party well known trademarks are held in Respondent’s name. This further supports the finding that the disputed domain name is being used in bad faith.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith. As Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) it is entitled to succeed in its application for transfer of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <emerson-electrics1.com> domain name be TRANSFERRED from Respondent to Complainant.
____________________________________
James Bridgeman SC
Panelist
Dated: June 4, 2020
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