Eastman Chemical Company v. Manila
Industries, Inc.
Claim
Number: FA0504000450806
Complainant is Eastman Chemical Company (“Complainant”),
represented by Carrie L. Kiedrowski, of Jones Day, 901
Lakeside Ave., North Point Building, Cleveland, OH 44114. Respondent is Manila Industries, Inc. (“Respondent”), Attn: 7713 – 145, 3522 2nd
Floor Rm 2 AL 11 B, Lard Prao Road, Klongchan Bangkapi, Bangkok, 10240
Thailand.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <eastmanchemicals.com>, registered with Compana,
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
4, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 8, 2005.
On
April 6, 2005, Compana, Llc confirmed by e-mail to the National Arbitration
Forum that the domain name <eastmanchemicals.com> is registered
with Compana, Llc and that Respondent is the current registrant of the name. Compana,
Llc has verified that Respondent is bound by the Compana, Llc registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
April 13, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 3, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@eastmanchemicals.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
May 5, 2005, pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the National Arbitration Forum appointed Hon. Ralph
Yachnin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <eastmanchemicals.com>
domain name is confusingly similar to Complainant’s federally registered
EASTMAN mark.
2. Respondent does not have any rights or
legitimate interests in the <eastmanchemicals.com> domain name.
3. Respondent registered and used the <eastmanchemicals.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is a
Fortune 500 company with approximately 12,000 employees and sales in 2004 of
$6.6 billion. Complainant manufactures
and markets more than 1,200 chemicals, fibers and plastic products.
Complainant owns
numerous registrations for the EASTMAN mark with the U.S. Patent and Trademark
Office, including registration numbers 556,354; 574,425; 619,228; 631,434;
641,595; and 850,818. The EASTMAN mark
is used in connection with a variety of goods and services such as “synthetic
resins,” “vitamin compounds and vitamin preparations,” “polyethylene waxes, and
waxes made from polyethylene,” “chemical preparation,” and “organic chemicals.”
Respondent
registered the <eastmanchemicals.com> domain name on February 4,
2005. The domain name resolves to a
generic search engine website. The
website contains a variety of links pertaining to chemical-related websites,
including “chemical engineering,” “chemical industry,” “chemical vapor
deposition,” “chemical engineer,” “chemical engineering job,” and “chemical
engineering jobs.” The website also
contains a hyperlink entitled “Chemicals, Buy Chemicals online.”
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."
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.
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.
Complainant has
established a presumption of valid trademark rights in the EASTMAN mark as the
result of its federal registrations of the mark. Respondent has failed to overcome the presumption. Therefore, Complainant has established
rights in the EASTMAN mark under Policy ¶ 4(a)(i). See Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption); see also Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark).
Panels have held that a domain name is
confusingly similar to a third-party mark where the domain name contains the
third-party mark and simply adds a word to the mark that describes the types of
goods or services offered by the third-party.
See Space
Imaging LLC v. Brownell,
AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where
Respondent’s domain name combines Complainant’s mark with a generic term that
has an obvious relationship to Complainant’s business); see also Westfield Corp., Inc. v. Hobbs,
D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain
name confusingly similar because the WESTFIELD mark was the dominant element).
In the instant
case, the disputed domain name, <eastmanchemicals.com>, contains
Complainant’s EASTMAN mark and has simply added the term “chemicals.” Complainant’s mark is used in connection
with such things as “chemical
preparation” and “organic chemicals.”
Therefore, the Panel concludes that the term “chemicals” describes the
types of goods offered by Complainant under the EASTMAN mark. Consistent with prior decisions under the
Policy, the Panel finds that the <eastmanchemicals.com> domain
name is confusingly similar to Complainant’s EASTMAN mark pursuant to Policy ¶
4(a)(i).
Complainant has
established Policy ¶ 4(a)(i).
Respondent has
failed to submit a response. This
failure is construed as an implicit admission that Respondent lacks rights to
and legitimate interests in the disputed domain name. See Do the Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to
[contest complainant’s allegations] is tantamount to admitting the truth of
complainant’s assertion in this regard.”);
see also Pavillion Agency, Inc.
v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as an admission that they have
no legitimate interest in the domain names).
By failing to respond to the Complaint,
Respondent has not presented any evidence to show that it is commonly known by
the disputed domain name. There is also
nothing persuasive in the record to indicate that Respondent has rights or
legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish
Country Store, FA 96209
(Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights
in a domain name when Respondent is not known by the mark); see also Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS
information, and its failure to imply that Respondent is commonly known by the
disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does
not apply).
Respondent is
not using the <eastmanchemicals.com> domain name in connection
with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i),
nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)
because Respondent has appropriated Complainant’s EASTMAN mark in the domain
name to market goods and services that compete with Complainant’s business. For example, the disputed domain name
resolves to a website that links Internet users to other commercial websites
where users are able to “Buy Chemicals online.” See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat.
Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of
Complainant’s mark to market products that compete with Complainant’s goods
does not constitute a bona fide offering of goods and services); see also Chip Merch., Inc. v. Blue Star Elec.,
D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were
confusingly similar to Complainant’s mark and that Respondent’s use of the
domain names to sell competing goods was illegitimate and not a bona fide
offering of goods).
Therefore, Complainant has successfully
established Policy ¶ 4(a)(ii).
Respondent
registered and used the <eastmanchemicals.com> domain name in bad
faith pursuant to Policy ¶ 4(b)(iv) because the name is confusingly similar to
Complainant’s EASTMAN mark and Respondent is using the name to intentionally
divert potential customers of Complainant’s business to Respondent’s website
for commercial gain. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that Respondent intentionally attempted to attract
Internet users to his website for commercial gain by creating a likelihood of
confusion with Complainant’s mark and offering the same services as Complainant
via his website); see also Scholastic
Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001)
(finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the
domain name at issue to resolve to a website offering similar services as
Complainant into the same market).
Given the fact
that Complainant is a Fortune 500 company with approximately 12,000 employees
and sales in 2004 of $6.6 billion, it is unlikely that Respondent did not know
about Complainant’s EASTMAN mark prior to registering the disputed domain
name. By adding the term “chemicals” to
Complainant’s EASTMAN mark in the domain name, which describes the types of
goods offered by Complainant under its mark, Respondent has further evidenced
its knowledge of Complainant’s mark prior to registration. Knowingly registering a domain name, either
actually or constructively, which encompasses a well known third-party
trademark, is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)
(“[T]here is a legal presumption of bad faith, when Respondent reasonably
should have been aware of Complainant’s trademarks, actually or
constructively.”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th
Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be
similar to another, one can infer an intent to confuse.").
Therefore,
Complainant has established 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 <eastmanchemicals.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
May 6, 2005
National Arbitration Forum