Emerson Electric Co. v. Robert J Reese
Claim Number: FA2004001892266
Complainant is Emerson Electric Co. (“Complainant”), Missouri, USA. Respondent is Robert J Reese (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eme-rson.com>, registered with Google Llc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 16, 2020; the Forum received payment on April 16, 2020.
On April 16, 2020, Google Llc confirmed by e-mail to the Forum that the <eme-rson.com> domain name is registered with Google Llc and that Respondent is the current registrant of the name. Google Llc has verified that Respondent is bound by the Google 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 April 22, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 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@eme-rson.com. Also on April 22, 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 May 13, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant is a global manufacturing and technology company. Complainant has rights in the EMERSON mark through its registration of the mark with multiple trademark agencies, including the European Union Intellectual Property Office (“EUIPO”) and the United States Patent and Trademark Office (“USPTO”) (e.g. USPTO Reg. No. 111,931, registered Aug, 15, 1916). See Amend. Compl. Ex. A. Respondent’s <eme-rson.com> domain name is identical or confusingly similar to Complainant’s mark as it contains Complainant’s mark in its entirety and adds a hyphen in the middle and a generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <eme-rson.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name and email to create the impression of authorization and administration by Complainant and to pass off as various employees of Complainant. The disputed domain name resolved to a blank webpage that lacks content.
Respondent registered and uses the <eme-rson.com> domain name in bad faith. Respondent uses the disputed domain name for the purpose of launching a phishing attack by impersonating Complainant’s employees and sending fraudulent emails. The disputed domain name does not resolve to an active webpage. Respondent registered the disputed domain name with actual knowledge of Complainant’s trademark rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is engaged in the global manufacturing and technology fields.
2. Complainant has established its trademark rights in the EMERSON mark through its registration of the mark with multiple trademark agencies, including the European Union Intellectual Property Office (“EUIPO”) and the United States Patent and Trademark Office (“USPTO”) (e.g. USPTO Reg. No. 111,931, registered Aug, 15, 1916).
3. Respondent registered the <eme-rson.com> domain name on January 10, 2020.
4. Respondent uses the disputed domain name and associated email to create the impression of authorization and administration by Complainant and to pass itself off as various employees of Complainant. The disputed domain name has also resolved to a blank webpage that lacks content.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the EMERSON mark based on registration with multiple trademark agencies (e.g. USPTO Reg. No. 111,931, registered Aug, 15, 1916). See Amend. Compl. Ex. A. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). Accordingly, the Panel finds that Complainant has established rights in the EMERSON mark for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s EMERSON mark. Complainant argues that Respondent’s <eme-rson.com> domain name is identical or confusingly similar to Complainant’s mark as it contains Complainant’s mark in its entirety and adds a hyphen in the middle and a generic top-level domain (“gTLD”). The addition of a hyphen a gTLD fails to distinguish a domain name sufficiently for the purposes of Policy ¶ 4(a)(i). See ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug, 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”). The Panel therefore finds that the <eme-rson.com> domain name is confusingly similar to the EMERSON mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s EMERSON trademark and to use it in its domain name, adding a hyphen and the gTLD “.com” which do not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <eme-rson.com> domain name on January 10, 2020;
(c) Respondent uses the disputed domain name and email to create the impression of authorization and administration by Complainant and to pass itself off as various employees of Complainant. The disputed domain name has also resolved to a blank webpage that lacks content;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent lacks rights or legitimate interests in the <eme-rson.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. 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). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Robert J Reese,” and there is no other evidence to suggest that Respondent was authorized to use the EMERSON mark. Therefore, the Panel find Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Respondent fails to use the <eme-rson.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name and email to create the impression of authorization and administration by Complainant and to pass itself off as various employees of Complainant. Use of a disputed domain name to pass off as a complainant via email may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1403001550388 (Forum May 5, 2014) (“Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers. The domain name also resolved to a website similar to Complainant's website. The Panel found that such actions precluded a bona fide offer or fair use.”). Complainant provides screenshots of emails purportedly sent by respondent using the disputed domain name impersonating actual employees of Complainant. See Amend. Compl. Ex. F . Therefore, the Panel finds Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name per Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant argues Respondent lacks rights and legitimate interest in the <eme-rson.com> domain name as the disputed domain name resolved to a blank webpage that lacks content. The failure to make active use of a disputed domain name can show a lack or rights or legitimate interest per Policy ¶ 4(a)(ii). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”). Complainant provides a screenshot of the resolving webpage of the disputed domain name which displays a blank webpage. See Amend. Compl. Ex. C. The Panel therefore finds Respondent lacks rights or legitimate interest in the disputed domain name per Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends Respondent registered and uses the <eme-rson.com> domain name in bad faith as Respondent uses the disputed domain name for the purpose of launching a phishing attack by impersonating Complainant’s employees and sending fraudulent emails. Passing off as an employee of a complainant in furtherance of phishing can show bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also Amazon Technologies, Inc. v. jaskima smith, FA 1750160 (Forum Oct. 26, 2017) (finding the respondent registered and used the disputed domain name in bad faith to pass off as the complainant in an attempt to gain personal information from users who mistakenly access the website). The Panel recalls Complainant provides screenshots of emails purportedly sent by respondent using the disputed domain name impersonating actual employees of Complainant. See Amend. Compl. Ex. F. The Panel therefore finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) or (iv).
Secondly, Complainant argues Respondent registered and uses the <eme-rson.com> domain name in bad faith as the disputed domain name does not resolve to an active webpage. Inactive holding of a disputed domain name can show bad faith registration and use per Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (FORUM June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). The Panel recalls Complainant provides a screenshot of the resolving webpage of the disputed domain name which displays a blank webpage. See Amend. Compl. Ex. C. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant argues Respondent registered and uses the <eme-rson.com> domain name in bad faith as Respondent registered the disputed domain name with actual knowledge of Complainant’s trademark rights. Actual knowledge of a complainant’s mark at the time of registration of a disputed domain name can show bad faith registration and can be established by a respondent’s attempts to pass itself off as a complainant. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant argues that Respondent’s attempts to pass itself off as employees of Complainant shows actual knowledge of Complainant’s rights in the mark and indicates bad faith. See Amend. Compl. Ex. F. The Panel therefore finds Respondent had actual knowledge of Complainant’s rights in the EMERSON mark and registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the EMERSON mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <eme-rson.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 14, 2020
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