Eastman Chemical Company v. Eugene Lawrence
Claim Number: FA2006001898536
Complainant is Eastman Chemical Company (“Complainant”), represented by Jonathan Uffelman of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, USA. Respondent is Eugene Lawrence (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eastmanco.us>, 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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 1, 2020; the Forum received payment on June 1, 2020.
On June 2, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <eastmanco.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 2, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 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@eastmanco.us. Also on June 2, 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 24, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the National Arbitration 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is an American Fortune 500 company engaged in the global manufacture and sale of chemicals, fibers and plastics.
Complainant holds a registration for the EASTMAN trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 574,245, registered May 12, 1953, and renewed most recently on May 31, 2013.
Respondent registered the domain name <eastmanco.us> on April 21, 2020.
The domain name is confusingly similar to Complainant’s EASTMAN mark.
Respondent is not licensed or otherwise authorized to use Complainant’s EASTMAN mark.
Respondent has not been commonly known by the domain name.
Respondent does not use the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The domain name does not resolve to an active webpage.
Instead, Respondent uses an email address associated with the domain name to create the impression of an association with Complainant in order to pass itself off as an employee of Complainant in furtherance of a fraudulent phishing scheme by which it seeks to acquire sensitive personal, business or financial information from unsuspecting consumers.
Respondent does not have rights to or legitimate interests in the domain name.
Respondent has engaged in a pattern of bad faith domain name registrations.
Respondent provided false and misleading WHOIS information to obtain registration of the domain name.
Respondent registered the domain name with knowledge of Complainant’s rights in the EASTMAN mark.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered or is being used by Respondent in bad faith.
Because of the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as appropriate in rendering its decision.
Complainant has rights in the EASTMAN trademark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Nintendo of America Inc. v. lin amy, FA 1818485 (Forum December 24, 2018):
Complainant’s ownership a USPTO trademark registration for the … mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <eastmanco.us> domain name is confusingly similar to Complainant’s EASTMAN mark. The domain name incorporates the mark in its entirety, with only the addition of the generic term “co,” the common abbreviation for “company,” which relates to Complainant’s form of business organization, plus the country-code Top-Level Domain (“ccTLD”) “.us”. These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Victoria’s Secret v. Plum Promotions, FA 96503 (Forum February 27, 2001):
The mere addition of the generic term “tv” [to the mark of a UDRP complainant in creating a domain name] does not reduce the likelihood of confusion [between the mark and the domain name] under Policy 4(a)(i).
See also Tropar Mfg. Co. v. TSB, FA 127701 (Forum December 4, 2002) (finding that the addition of the ccTLD “.us” to the mark of a complainant in forming a domain name failed to add any distinguishing characteristic to the domain name, as a consequence of which it was found to be substantively identical to that mark).
Further see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a ccTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <eastmanco.us> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iv), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <eastmanco.us> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the EASTMAN mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Eugene Lawrence,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(iii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant contends, and Respondent does not deny, that Respondent uses an email address associated with the domain name to create the impression of an association with Complainant in order to pass itself off as an employee of Complainant in furtherance of a fraudulent phishing scheme by which it seeks to acquire sensitive personal, business or financial information from unsuspecting consumers. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iv) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that a respondent’s attempt to employ a disputed domain name to pass itself off as a mark holder / UDRP complainant through emails did not constitute a bona fide offering of goods or services, so that that respondent lacked rights to or legitimate interests in the domain name).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent uses an email address associated with the <eastmanco.us> domain name to create the impression of an association with Complainant in order to pass itself off as an employee of Complainant in furtherance of a fraudulent phishing scheme by which it seeks to acquire, and, presumably exploit for profit, sensitive personal, business or financial information from unsuspecting consumers. This use of the domain name amply demonstrates Respondent’s bad faith in registering and using it. See, for example, Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that a respondent’s use of a disputed domain name in an e-mail address to pass itself off as a UDRP complainant in a phishing scheme was evidence of bad faith registration and use).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the EASTMAN mark when it registered the <eastmanco.us> domain name. This further illustrates Respondent’s bad faith in registering it. See, for example, Google Inc. v. Ahmed Humood, FA1411001591796 (Forum January 7, 2015):
This Panel makes that inference; Respondent has [sic] actual knowledge of Complainant’s mark at the time of domain name registration [and thus demonstrated bad faith in registering that domain name]….
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the usTLD Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <eastmanco.us> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 1, 2020
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