PolyOne Corporation v. Lori Pierce / PolyOne
Claim Number: FA1508001632596
Complainant is PolyOne Corporation (“Complainant”), represented by James L. DeFeo, Ohio, United States. Respondent is Lori Pierce / PolyOne (“Respondent”), Ohio, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <polyoneusa.com>, registered with Wild West Domains, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 10, 2015; the Forum received payment on August 10, 2015.
On August 11, 2015, Wild West Domains, LLC confirmed by e-mail to the Forum that the <polyoneusa.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC 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 August 12, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 1, 2015 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@polyoneusa.com. Also on August 12, 2015, 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 September 8, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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’s Contentions
1. Complainant is a global company with operations in North America, South America, Europe, and Asia. As a premier provider of specialized polymer materials, services, and solutions, Complainant offers more than 35,000 polymer solutions to over 10,000 customers across the globe. Complainant has registered the POLYONE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,463,935, registered June 26, 2001), which demonstrates Complainant’s rights in its mark. The Panel is directed to Attached Exhibit 2 for copies of Complainant’s USPTO registrations. The <polyoneusa.com> domain name is confusingly similar to Complainant’s mark as it adds the geographic identifier “usa” and the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark, although the WHOIS seems to denote Respondent as such. Second, Respondent is not authorized or licensed to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to host an email address from which Respondent sends deceptive emails designed to impersonate Complainant to attempt to purchase technical equipment from Complainant’s suppliers. Specifically, Respondent used the disputed domain name to send a fraudulent email in an attempt to impersonate Complainant on the same day it registered the domain name.
3. Respondent has registered and used the disputed domain name in bad faith pursuant to Policies ¶ 4(b)(iv) and ¶ 4(a)(iii). Specifically, Respondent has used the disputed domain name to intentionally attract for commercial gain Internet users by creating a likelihood of confusion with the POLYONE mark as the source of Respondent’s online location. Further, Respondent is using the disputed domain name to phish for information by pretending to be Complainant and to host an email address to pass itself off as the complainant to solicit business. Finally, Respondent’s registration and subsequent use of the disputed domain name demonstrates its actual knowledge of the POLYONE mark and Complainant’s rights in the mark.
B. Respondent’s Contentions
1. Respondent did not submit a response in this proceeding.
1. Respondent’s <polyoneuse.com> domain name is confusingly similar to Complainant’s POLYONE mark.
2. Respondent does not have any rights or legitimate interests in the <polyoneuse.com> domain name.
3. Respondent registered or used the <polyoneuse.com> domain name 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:
(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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant is a global company with operations in North America, South America, Europe, and Asia. As a premier provider of specialized polymer materials, services, and solutions, Complainant offers more than 35,000 polymer solutions to over 10,000 customers across the globe. Complainant has allegedly registered the POLYONE mark with the USPTO (e.g., Reg. No. 2,463,935, registered June 26, 2001). Complainant contends that this USPTO registration suffices to demonstrate rights in its mark. The panel is reminded of Attached Exhibit 2 for copies of Complainant’s USPTO registrations. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that a trademark registration with the USPTO suffices to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that the <polyoneusa.com> domain name is confusingly similar to Complainant’s mark as it adds the geographic identifier “usa” and the gTLD “.com.” Past panels have found confusing similarity pursuant to Policy ¶ 4(a)(i) where a respondent’s disputed domain name adds a geographic identifier. See Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”). Past panels have also found that the addition of a gTLD does not adequately distinguish a respondent’s disputed domain name from a complainant’s mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). For these reasons, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Further, Complainant argues that Respondent has no authorization or license to use the POLYONE mark. The Panel notes that the WHOIS information merely lists “Lori Pierce / PolyOne” as registrant and that Respondent has failed to submit any evidence for the Panel’s consideration. While Respondent seems to have listed “PolyOne” in its contact information in listing the disputed domain name, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
Complainant alleges that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). Complainant argues that Respondent uses the disputed domain name to host an email address from which Respondent sends deceptive emails designed to impersonate Complainant to attempt to purchase technical equipment from Complainant’s suppliers. Complainant further argues that Respondent used the disputed domain name to send a fraudulent email in an attempt to impersonate Complainant on the same day it registered the domain name. See Exhibits 4-11 for copies of emails from Respondent, wherein Respondent claims to be known by the name “Robert Patterson” with title of “Director, Purchasing & Contracts” for PolyOne Corporation. Past panels have concluded that a respondent has not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use where the respondent intentionally attempts to pass itself off as the complainant, presumably for financial gain. See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Accordingly, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant argues that Respondent has used the disputed domain name to intentionally attract for commercial gain Internet users by creating a likelihood of confusion with the POLYONE mark as the source of Respondent’s online location, thereby engaging in conduct proscribed by Policy ¶ 4(b)(iv). Specifically, Complainant alleges that Respondent uses the disputed domain name to host an email address from which Respondent sends deceptive emails designed to impersonate Complainant to attempt to purchase technical equipment from Complainant’s suppliers. Past panels have found bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where a respondent, through its use of the disputed domain name, creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the respondent’s website. See Hancock Fabrics, Inc. v. Active Advantage, Inc., FA 204111 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent’s use of the <hancockfabric.com> domain name, a domain name confusingly similar to Complainant’s HANCOCK FABRICS mark, to redirect Internet traffic to a website that provides a selection of jokes demonstrates Respondent’ bad faith use of the disputed domain name because Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which evidences bad faith registration and use under Policy ¶ 4(b)(iv).”). As such, the Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant contends that Respondent is using the disputed domain name to phish for information by pretending to be Complainant and to host an email address to pass itself off as the complainant to solicit business. Past panels have found bad faith pursuant to Policy ¶ 4(a)(iii) where a respondent uses a confusingly similar domain name to acquire information that is proprietary to the complainant. See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name). Past panels have also found bad faith registration and use where a respondent uses the disputed domain name as an email address to pass itself off as the complainant. See Qatalyst Partners LP v. Devimore, FA 1393436 (Nat. Arb. Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). As such, the Panel finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent had actual knowledge of the POLYONE mark and Complainant’s rights in the mark. In arguing this, Complainant notes that Respondent referenced the POLYONE mark directly in an email and even included a link to Complainant’s actual home site; activities which Respondent engaged in repetitiously. Panels have found bad faith under Policy ¶ 4(a)(iii) that circumstances exist under which a finding of actual knowledge is reasonable because a respondent was deemed “well-aware” of a complainant and its mark. See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). Likewise, this Panel finds Respondent has demonstrated its actual knowledge of Complainant and its POLYONE mark, imputing a finding of bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <polyoneusa.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 21, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page