Emerson Electric Co. v. Miracle Store
Claim Number: FA2204001993538
Complainant is Emerson Electric Co. (“Complainant”), represented by John M. Groves of Emerson Electric Co., Missouri, USA. Respondent is Miracle Store (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eemersonelectric.com>, registered with OwnRegistrar, Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 24, 2022; the Forum received payment on April 25, 2022.
On April 25, 2022, OwnRegistrar, Inc. confirmed by e-mail to the Forum that the <eemersonelectric.com> domain name is registered with OwnRegistrar, Inc. and that Respondent is the current registrant of the name. OwnRegistrar, Inc. has verified that Respondent is bound by the OwnRegistrar, Inc. 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 April 26, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 2022 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@eemersonelectric.com. Also on April 26, 2022, 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 May 22, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Emerson Electric Co., is a Missouri-based global manufacturing and technology company.
Complainant claims rights in the EMERSON mark through registration with various trademark registries worldwide including the USPTO.
The at-issue domain name <eemersonelectric.com> is confusingly similar because it incorporates wholly Complainant’s EMERSON mark, differing only through an intentional misspelling of the EMERSON mark, and appended by the term “electric” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <eemersonelectric.com> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant authorized Respondent to use the EMERSON mark in any way. Additionally, Respondent fails to use the domain name in connection with make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent fails to make use of the domain name, resolving only to an empty page featuring no content.
Respondent registered and uses the <eemersonelectric.com> disputed domain name in bad faith. Respondent uses the disputed domain name to pass off as Complainant to conduct phishing attacks. Moreover, this demonstrates that Respondent had actual knowledge of Complainant’s rights in the EMERSON mark. Respondent also passively holds the domain name, hosting no content on the resolving webpage.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Complainant’s Additional Submission
Complainant contends in its Additional Submission titled, Complainant’s Additional Supplemental Filing, as follows:
Respondent has used email from info@eemersonelectric.com to at least one third-party pretending to be from Complainant. There, Respondent impersonated an agent of Complainant to open a credit account and then, using a fake letterhead and purchase order, requested materials in excess of $100,000 to be sent to an address designated by Respondent.
Respondent was aware of Complainant’s rights in EMERSON prior to registering and using the at-issue domain name.
Complainant has trademark rights in EMERSON.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the EMERSON trademark.
Respondent uses the at-issue domain name to facilitate fraud via email.
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”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant has multiple national trademark registrations for its EMERSON mark including registration with the USPTO. A single national trademark registration is sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i).See United Way of America v. Alex Zingaus, FA 1036202 (NAF Aug. 30, 2007) ("Panels have long recognized Complainant's registration of a mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy 4(a)(i)"); see also, Bittrex, Inc. v. Domain Privacy Services, FA 1786849 (Forum June 15, 2018) (finding Complainant has trademark rights in the BITTREX mark through registration of the mark with the EUIPO and the USPTO).
Respondent’s at-issue <eemersonelectric.com> domain name contains Complainant’s EMERSON trademark prefixed with the letter “e” and sufixed with the suggestive term “electric,” with all followed by the generic “.com” top-level domain name. The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the domain name from Complainant’s EMERSON mark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s at-issue domain name is confusingly similar to Complainant’s EMERSON trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Miracle Store” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <eemersonelectric.com> domain name. The Panel therefore concludes that Respondent is not commonly known by <eemersonelectric.com> for the purposes of Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”).
Respondent’s <eemersonelectric.com> domain name is used to host email pretending to be from Complainant so that Respondent might trick third-parties into mistakenly remitting funds to Respondent. Respondent’s use of the at-issue domain name to pass itself off as Complainant via email or otherwise and swindle third parties demonstrates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, there is evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First and as mentioned above, Respondent used the at-issue domain name in connection with an email based scheme to swindle third parties. To wit, Respondent sent email from <eemersonelectric.com> that pretended to be initiated by one of Complainant’s agents so as to create the illusion that the recipient was communicating with Complainant. Respondent, cloaked as Complainant, then acted to further deceive such party into submitting payments to Respondent’s account. Respondent’s use of the domain name to afford a confusingly similar email address in furtherance of fraud shows Respondent’s bad faith registration and use of the <eemersonelectric.com> domain name under Policy ¶ 4(a)(iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the Respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)).
Moreover, Respondent had actual knowledge of Complainant’s rights in the EMERSON mark when it registered <eemersonelectric.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark and from Respondent use of the domain name to pose as Complainant as part of its scheme to defraud. Respondent’s registration and use of <eemersonelectric.com> with knowledge of Complainant’s rights in such domain name further shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering 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 <eemersonelectric.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 24, 2022
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