Emerson Electric Co. v. dwee cddsa / Macbook productions llc
Claim Number: FA1807001796907
Complainant is Emerson Electric Co. (“Complainant”), Missouri, USA. Respondent is dwee cddsa / Macbook productions llc (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emerson-com.us>, registered with NameCheap, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 16, 2018; the Forum received payment on July 16, 2018.
On July 17, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <emerson-com.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 July 17, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 6, 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@emerson-com.us. Also on July 17, 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 August 7, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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 usTLD Dispute Resolution Policy ("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 usTLD Policy, usTLD 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 diversified, global manufacturing and technology company offering a wide range of products and services in the industrial, commercial and consumer markets through its Process Management, Industrial Automation, Network Power, Climate Technologies, and Commercial & Residential Solutions businesses. Complainant has rights in the EMERSON mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”), the European Union, and other jurisdictions, and through its use of the mark since the year 1890. Respondent’s <emerson-com.us> domain name is confusingly similar to Complainant’s EMERSON mark as Respondent merely adds a hyphen, the generic term “com” and a “.us” country-code top-level domain (“ccTLD”) to the mark. The <emerson-com.us> domain name was registered on May 4, 2018.
Respondent has no rights or legitimate interests in the <emerson-com.us> domain name. Respondent is not permitted or authorized to use Complainant’s EMERSON mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent attempts to impersonate one of Complainant’s employees through an email phishing scheme aimed at Complainant’s customers. Further, the disputed domain name currently resolves to an inactive website.
Complainant’s EMERSON mark is well known and Respondent had actual knowledge of Complainant’s rights in such mark prior to registering the disputed domain name. Respondent registered and uses the <emerson-com.us> domain name in bad faith. Respondent uses the domain name in an attempt at impersonating Complainant in furtherance of an email phishing scheme. Furthermore, Respondent has engaged in a pattern of bad faith registration as it currently owns other domain names which incorporate well-known, third party trademarks.
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;
(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:
(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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 supports its claim of rights in the EMERSON mark through evidence of its tradmark registrations at the USPTO and the EUTM office. Registering a mark with the USPTO, alone, is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Further, the Complainant provides evidence of the use and reputation of its EMERSON mark through its submission of screenshots of its www.emerson.com and www.emersonprocess.com websites, its listing in the Fortune® Global 500 ranking of companies, various awards it has won, and through an affidavit of one of Complainant’s officers. Therefore, the Panel finds that Complainant has sufficiently demonstrated its rights in the EMERSON mark under Policy ¶ 4(a)(i).
Next, Complainant alleges Respondent’s <emerson-com.us> domain name is confusingly similar to the EMERSON trademark. Specifically, Complainant contends that Respondent merely adds a generic term, a hyphen, and a ccTLD to the fully incorporated EMERSON mark. Adding generic terms, hyphens, or ccTLDs to a complainant’s mark fails to mitigate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Transamerica Corporation v. Whois Foundation, FA 1700616 (Forum Dec. 5, 2016) (“For the purposes of comparison of the domain name and the trademark, it is agreed by panelists that TLDs and ccTLDs can generally be disregarded”); see also Daniel Handler v. Masanori Toriimoto / PLAN-B Co.,Ltd, FA 1778986 (Forum May 7, 2018) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732459 (Forum June 30, 2017) (“Further, the addition of “com” is particularly unhelpful in creating a distinction between a domain name and a mark.”).
As Respondent merely adds the term “com,” a hyphen, and a “.us” ccTLD to the word EMERSON, the Panel agrees with the Complainant and finds that Respondent’s <emerson-com.us> domain name is confusingly similar to the EMERSON trademark per 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). Should Complainant succeed in this, the burden then 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”).
Where a domain name is identical or confusingly similar to a well-known trademark yet does not resolve to any meaningful website content, panels have not hesitated to hold that the domain has not been used in connection with a bona fide offering of goods or services and, as such, that no rights or legitimate interests exists on the part of a respondent under Policy ¶ 4(c)(i). See, e.g, Victoria's Secret Stores Brand Management, Inc. v. Travis Martin c/o Dynadot Privacy, FA 1250363 (Forum April 22, 2009) (“the failure of Respondent’s confusingly similar <victoriassecrret.com> domain name to resolve to any website is evidence that Respondent has not made a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Here, the <emerson-com.us> domain resolves to a website displaying little more than the text “Index of /” and a link to a file called “cgi-bin”. In the absence of any submission from the Respondent, it may be concluded that such non-substantive content indicates that the Respondent has no intention to make a bona fide offering of goods or services and thus confers no rights or legitimate interests in the domain name.
More importantly, Respondent has used the <emerson-com.us> domain name for a phishing scheme in which it sends emails impersonating an employee of the Complainant and seeks to have Complainant’s customers pay fake invoices. This sort of activity has categorically been held not to be a bona fide offering or to confer any rights or legitimate interests in a disputed domain name. Garmin Switzerland GmbH v. Narinder Padda, FA 1794452 (Forum July 30, 2018) (“Use of a domain name in connection with a phishing scheme is not considered to be a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).”)
Next, Complainant asserts that it has not authorized Respondent to use the EMERSON mark and that Respondent is not commonly known by the disputed domain name or the name “Emerson”. Where a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Complainant provides a copy of the WHOIS record for the <emerson-com.us> domain name which identifies Respondent as “dwee cddsa / Macbook productions llc”. There is no evidence in the record to suggest Respondent is known otherwise or was authorized to use the EMERSON mark. Consequently, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Finally, Complainant asserts that Respondent is not making a legitimate noncommercial or fair use of the <emerson-com.us> domain without intent for commercial gain, and so its actions do not fall within Policy ¶4(c)(iii). The domain uses an identical copy of the Complainant’s EMERSON mark and adds the string “-com” in an apparent attempt to mimic Complainant’s legitimate emerson.com domain name. This, combined with the fact that Respondent uses its domain name in connection with a phishing scheme that references one of Complainant’s employees and targets Complainant’s customers leads to the conclusion that the <emerson-com.us> domain is derived from the Complainant’s mark and is not being used for any generic or descriptive meaning relating to the personal name “Emerson”. It is also not being used for legitimate purposes in a nominatively descriptive manner to refer to Complainant. Respondent’s use also does not fit into any accepted category of fair use such as news reporting, commentary, political speech, education, etc. As such, this panel finds that Respondent is not using the disputed domain name for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(iii).
Complainant claims that Respondent had actual knowledge of Complainant’s EMERSON mark prior to registering the <emerson-com.us> domain name. As Respondent uses the disputed domain name to fraudulently pass itself off as an actual and named employee of Complainant, the Panel agrees.
Further, Complainant contends that Respondent has used an email address associated with the <emerson-com.us> domain name to perpetrate a phishing scheme in which it seeks to improperly elicit the payment of fake invoices by Complainant’s customers. Use of a confusingly similar domain name in this manner is clearly indicative of bad faith under 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 per Policy ¶ 4(b)(iv)); see also Smiths Group plc v. Snooks, FA 1372112 (Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). The Panel notes that Complainant provides copies of emails sent from an email associated with the disputed domain name and a screenshot of a LinkedIn page for one of its actual employees with the same name as that used in the Respondent’s emails. In light of the Respondent’s purposeful and targeted attempts to seek commercial gain from its use of the <emerson-com.us> domain name, the Panel finds that Respondent registered and uses the domain name in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant claims that Respondent currently holds domain names incorporating well-known, third party trademarks. Registration of domain names which incorporate third party marks may indicate bad faith under Policy ¶ 4(b)(ii). See N.H. Sweepstakes Comm’n v. We Web Well, Inc., FA 197499 (Forum Nov. 3, 2003) (finding that the complainant’s submission of WHOIS evidence that listed the respondent as the registrant of other domain names incorporating third-party trademarks was sufficient to establish that the respondent had a pattern of registering and using domain names in bad faith pursuant to Policy ¶ 4(b)(ii)). While Complainant provides a list of domain names incorporating third party marks and alleges Respondent is the owner of those domain names, the Panel notes that Complainant does not put into evidence any WHOIS records or other documentation to support Respondent’s ownership of these domain names. Therefore, the Panel declines to find that Respondent has engaged in a pattern of bad faith per Policy ¶ 4(b)(ii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <emerson-com.us> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: August 8, 2018
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