CoorsTek, Inc. v. Gwendolyn K Bohn / CoorsTek Inc
Claim Number: FA1712001764186
Complainant is CoorsTek, Inc. (“Complainant”), represented by Jodi A. DeSchane of Faegre Baker Daniels, LLP, Minnesota, USA. Respondent is Gwendolyn K Bohn / CoorsTek Inc (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coorstek.email>, registered with Google 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 22, 2017; the Forum received payment on December 27, 2017.
On December 24, 2017, Google Inc. confirmed by e-mail to the Forum that the <coorstek.email> domain name is registered with Google Inc. and that Respondent is the current registrant of the name. Google Inc. has verified that Respondent is bound by the Google 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 January 5, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2018 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@coorstek.email. Also on January 5, 2018, 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 January 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 is a multinational manufacturer of engineered ceramics owned by a trust of the Coors family. Complainant has rights in the COORSTEK mark through the registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,962,220, registered Jun. 14, 2005). Respondent’s <coorstek.email> domain name is confusingly similar to Complainant’s COORSTEK mark because Respondent incorporates the mark in its entirety and adds the “.email” generic top level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <coorstek.email> domain name because Respondent is not licensed or authorized to use the COORSTEK mark. Additionally, Respondent is not commonly known by the disputed domain name and fraudulently identified Complainant as the owner of the disputed domain name. Furthermore, Respondent uses the disputed domain name to pass itself off as Complainant as part of a phishing scheme to obtain users’ personal and financial information.
Respondent’s use of the <coorstek.email> domain name in order to pass itself off as Complainant indicates bad faith registration and use. Additionally, Respondent uses the disputed domain name to conduct a phishing scheme which also indicates bad faith registration and use. Furthermore, Respondent had actual and constructive knowledge of Complainant’s rights to the COORSTEK mark at the time Respondent registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <coorstek.email> domain name.
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 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 (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 claims rights in the COORSTEK mark due to trademark registrations with the USPTO. Registering a mark with the USPTO is sufficient to demonstrate rights in a mark per Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Here, Complainant has supplied this Panel with copies of its USPTO registrations for the COORSTEK mark (e.g., Reg. No. 2,962,220, registered Jun. 14, 2005). Therefore, the Panel finds Complainant has sufficiently demonstrated rights in the COORSTEK mark per Policy ¶ 4(a)(i).
Additionally, Complainant asserts Respondent’s <coorstek.email> domain name is confusingly similar to Complainant’s COORSTEK mark because Respondent merely added a gTLD to the mark. Adding a gTLD to a fully incorporated mark is insufficient to differentiate the disputed domain name from the mark per Policy ¶ 4(a)(i). See Roche Therapeutics Inc. v. Williams Shorell, FA 1684961 (Forum Aug. 30, 2016) (“Complainant asserts Respondent’s <boniva.top> domain name is identical to the BONIVA mark. The addition of a generic top level domain to a mark does not differentiate the domain from said mark under Policy ¶ 4(a)(i).”). In this case, Respondent added the “.email” gTLD to Complainant’s COORSTEK mark. Therefore, the Panel finds Respondent’s <coorstek.email> domain name is identical or confusingly similar to Complainant’s COORSTEK mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant contends Respondent has no rights or legitimate interests in the <coorstek.email> domain name because Respondent is not licensed to use the COORSTEK mark. Additionally, Complainant argues Respondent registered the disputed domain name purporting to be Complainant but is in fact not affiliated with Complainant in any way. When a respondent registers a domain name purporting to be the complainant, a respondent must provide affirmative evidence beyond WHOIS information per Policy ¶ 4(c)(ii). See Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”). Here, WHOIS information identifies Respondent as “Gwendolyn K Bohn / Coorstek Inc.” Respondent did not submit a response to these proceedings. Therefore, the Panel finds Respondent is not commonly known by the <coorstek.email> domain name per Policy ¶ 4(c)(ii).
Next, Complainant argues Respondent does not make a bona fide offering of goods or services at the <coorstek.email> domain name because Respondent creates a false association with Complainant in order to steal confidential information from unsuspecting job seekers. Using a disputed domain name to pass itself off as a complainant for an email phishing scheme does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). As Complainant contends, Respondent’s website allows users looking for a job to apply at Respondent’s disputed domain name. Additionally, emails are sent to users who apply at Respondent’s website which ask for personal information. Therefore, the Panel finds Respondent’s attempts to pass itself off as Complainant do not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant claims Respondent intentionally attracts users to the <coorstek.email> domain name by creating a likelihood of confusion that Respondent is affiliated with Complainant and this indicates bad faith registration and use of the name. Attempts to pass itself off as a complainant in order to confuse users may indicate bad faith registration and use per Policy ¶ 4(b)(iv). See Qatalyst Partners LP v. Devimore, FA 1393436 (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 Complainant contends, Respondent’s <coorstek.email> domain name purports to offer jobs in Complainant’s business, and subsequent emails to prospective employees ask for users’ personal information. Therefore, the Panel finds Respondent’s attempts to pass itself off as Complainant demonstrate bad faith registration and use per Policy ¶ 4(b)(iv).
Complainant asserts that its trademark registrations for the COORSTEK mark existed well before the registration of the <coorstek.email> domain name. Complainant argues that Respondent therefore had actual and constructive knowledge of Complainant's rights in the mark. While constructive notice is not sufficient to support a bad faith finding, a Panel may find that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration"). The Panel agrees with Complainant and finds Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the COORSTEK mark per Policy ¶ 4(a)(iii).
Additionally, Complainant argues Respondent’s use of the <coorstek.email> domain name to conduct a phishing scheme indicates bad faith registration and use. Using a disputed domain name as part of a phishing scheme is an indication of bad faith registration and use per Policy ¶ 4(a)(iii). See Emdeon Business Services, LLC v. HR Emdeon Careers, FA1507001629459 (Forum Aug. 14, 2015) (finding that the respondent had engaged in an email phishing scheme indicating bad faith under Policy ¶ 4(a)(iii), where respondent was coordinating the disputed domain name to send emails to Internet users and advising them that they had been selected for a job interview with the complainant and was persuading the users to disclose personal information in the process). Here, Respondent sent email to users seeking employment at Complainant’s business and asked for personal information such as a photo ID. Therefore, the Panel finds Respondent’s emails constitute a phishing scheme and this indicates bad faith registration and use per Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <coorstek.email> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: February 2, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page