Corning Incorporated v. Jesse Read
Claim Number: FA1407001570195
Complainant is Corning Incorporated (“Complainant”), represented by Kristen M. Walsh of Nixon Peabody LLP, New York, USA. Respondent is Jesse Read (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pyrex.glass>, registered with Godaddy 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. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 17, 2014; the National Arbitration Forum received payment on July 17, 2014.
On July 17, 2014, Godaddy LLC confirmed by e-mail to the National Arbitration Forum that the <pyrex.glass> domain name is registered with Godaddy LLC and that Respondent is the current registrant of the name. Godaddy LLC has verified that Respondent is bound by the Godaddy 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 July 18, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 2014 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@pyrex.glass. Also on July 18, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.) 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" 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 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.
Complainant
1. Complainant has rights in the PYREX mark under Policy ¶ 4(a)(i).
a. Complainant is a world leader in specialty glass and ceramics, with over 150 years of materials science and process engineering knowledge. Complainant creates and makes keystone components that enable high-technology systems for consumer electronics, mobile emissions control, telecommunications, and life sciences.
b. Complainant has used its famous PYREX mark for glass and glass products since 1915, and owns numerous trademark registrations for the PYREX mark in the United States and around the world.
i. United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 115,846 registered march 13, 1917) (e.g., Reg. No. 3,272,064 registered July 31, 2007).
c. Respondent’s <pyrex.glass> domain name is confusingly similar to Complainant’s PYREX mark. Respondent uses Complainant’s PYREX mark in its entirety and adds the generic top-level domain (“gTLD”) “.glass” which describes the nature of the goods provided by Complainant.
2. Respondent has no rights or legitimate interests in the <pyrex.glass> domain name.
a. There is no evidence that Respondent is commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the PYREX mark.
b. Respondent is using the disputed domain name to divert Internet users seeking information about Complainant’s PYREX glass to a website containing third-party advertisements and sponsored links to third-party websites, presumably for commercial gain.
3. Respondent registered the disputed domain name in bad faith.
a. Respondent registered the disputed domain name for the primary purpose of selling it to Complainant for consideration in excess of any registration costs related to the disputed domain name.
b. Respondent’s use of the disputed domain name to resolve to a website displaying links to Complainant’s competitors disrupts Complainant’s business in bad faith.
c. Respondent is using the disputed domain name to attract Internet users to a commercial website where Respondent presumably collects revenue.
d. Respondent had actual knowledge of Complainant’s PYREX mark when Respondent registered the disputed domain name.
Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 states that it is a world leader in specialty glass and ceramics, with over 150 years of materials science and process engineering knowledge. Complainant creates and makes keystone components that enable high-technology systems for consumer electronics, mobile emissions control, telecommunications, and life sciences. Complainant states that it has used its famous PYREX mark for glass and glass products since 1915, and owns numerous trademark registrations for the PYREX mark in the United States and around the world. See USPTO (e.g., Reg. No. 115,846 registered March 13, 1917; Reg. No. 3,272,064 registered July 31, 2007). Past panels have continuously found that registration of a mark with the USPTO is sufficient to establish rights in that mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Since both Complainant and Respondent reside in the United States, the Panel concludes that Complainant’s USPTO registration is sufficient to establish Complainant’s rights under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <pyrex.glass> domain name is confusingly similar to Complainant’s PYREX mark. Complainant states that Respondent uses Complainant’s PYREX mark in its entirety and adds the (“gTLD”) “.glass” which describes the nature of the goods provided by Complainant. The panel in Guess? IP Holder L.P. v. Murphy, FA 1550205 (Nat. Art. Forum 2014) regarding the <guess.clothing> domain name, held that the addition of a top level domain can actually amplify the confusion of a domain name under Policy ¶ 4(a)(i)). The Panel concludes that Respondent’s use of Complainant’s entire PYREX mark and the mere addition of a gTLD results in the <pyrex.glass> domain name being identical to Complainant’s PYREX mark under Policy ¶ 4(a)(i). Porto Chico Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov. 15, 2000) (stating that the panel should resolve whether a mark is identical or confusingly similar “by comparing the trademark and the disputed domain name, without regard to the circumstances under which either may be used”).
Complainant has proven 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), 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 argues that Respondent has no rights or legitimate interests in the <pyrex.glass> domain name under Policy ¶ 4(c)(ii). Complainant claims there is no evidence that Respondent is commonly known by the disputed domain name, and that Complainant has not authorized or licensed Respondent to use the PYREX mark. The WHOIS information for Respondent’s disputed domain name lists “Jesse Read” as registrant. Respondent registered the disputed domain name on April 2, 2014. Respondent failed to submit a Response in the proceeding, and therefore, has not refuted Complainant’s contentions. As such, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent uses the disputed domain name to divert Internet users seeking information about Complainant’s PYREX glass to a website containing third-party advertisements and sponsored links to third-party websites, presumably for commercial gain. Respondent’s resolving website displays links including but not limited to, “Pyrex Bakeware,” “Glass Tubes in All Sizes,” “Pyrex Pot,” and “Pyrex Glass.” Past panels have found that resolving websites that promote links to the complainant and its competitors does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel finds that Respondent is not using the <pyrex.glass> domain name to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) by causing the disputed domain name to resolve to a webpage promoting websites belonging to competitors, as well as displaying links related to Complainant’s products.
Complainant has proven this element.
Complainant contends that Respondent registered and is using the <pyrex.glass> domain name in bad faith under Policy ¶ 4(b)(i). Complainant asserts that Respondent registered the disputed domain name for the primary purpose of selling it to Complainant for consideration in excess of any registration costs related to the disputed domain name. Complainant’s exhibits provide evidence that Respondent made an initial offer to negotiate a price around $10,000. Upon Complainant’s rejection and counter offer to purchase the disputed domain name for $40.17, Respondent’s purchase price, Respondent made a counter offer of $2,040.17. The panel in George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) concluded that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than the estimated out-of-pocket costs it incurred in initially registering the disputed domain name. The Panel concludes that Respondent’s request for $10,000 and $2,040.17 to sell the <pyrex.glass> domain name for which Respondent paid $40.17, indicates bad faith use and registration under Policy ¶ 4(b)(i).
Complainant asserts that Respondent’s use of the disputed domain name to resolve to a website displaying links to Complainant’s competitors as well as Complainant’s products, disrupts Complainant’s business in bad faith. The website includes links featuring Complainant’s products as well as links offering competing goods and services. Past panels have found evidence of bad faith where a respondent provides links to competitors of the complainant through the confusingly similar domain name. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel finds evidence of bad faith registration and use of the <pyrex.glass> domain name under Policy ¶ 4(b)(iii).
Complainant claims that Respondent uses the <pyrex.glass> domain name to attract Internet users to a commercial website where Respondent presumably collects revenue through the pay-per-click links displayed. Complainant contends that Respondent is misleading users and taking advantage of Complainant’s well known mark to achieve a wrongful competitive advantage and commercially gain. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel wrote, “Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).” The present case is comparable, and the Panel thus finds evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Complainant contends that Respondent had actual knowledge of Complainant’s PYREX mark when Respondent registered the <pyrex.glass> domain name. Complainant claims that based on the fame, strength, and distinctiveness of Complainant’s PYREX mark, there is no plausible circumstance in which Respondent could legitimately use the disputed domain name without causing confusion with Complainant’s PYREX mark. Complainant’s rights in the PYREX mark preexist Respondent’s registration of the disputed domain name, which was registered in 2014, while Complainant’s first use of the PYREX mark occurred in 1915. The Panel concludes that Respondent had actual knowledge of Complainant’s rights in the mark based on the fame and longevity of Complainant’s mark, the incorporation of Complainant’s mark in the disputed domain name, and the references to Complainant’s products on Respondent’s resolving website. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <pyrex.glass> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: August 22, 2014
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