Emerson Electric Co. v. Giovanni Laporta / Yoyo.Email
Claim Number: FA1504001614302
Complainant is Emerson Electric Co. (“Complainant”), Missouri, USA. Respondent is Giovanni Laporta / yoyo.email (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emerson.email>, registered with Godaddy LLC.
The undersigned certifies that has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 13, 2015; the Forum received payment on April 13, 2015.
On April 14, 2015, Godaddy LLC confirmed by e-mail to the Forum that the <emerson.email> 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 April 15, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 5, 2015 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.email. Also on April 15, 2015, 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.
A timely Response was received and determined to be complete on May 5, 2015.
Complainant submitted a timely Additional Submission, which was received on May 11, 2015.
Respondent submitted a timely Additional Submission, which was received on May 12, 2015.
On May 22, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant has registered the EMERSON mark with the United State Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 111,931, registered Aug. 15, 1916). The mark is used on or in connection with the sale of electric motors, electric fans, electric-powered pumps, and other electric-powered equipment. The <emerson.email> domain name is identical to Complainant’s mark because the domain name contains the entire mark and differs only by the addition of the generic top-level domain (“gTLD”) “.email.”
2. Respondent has no rights or legitimate interests. Respondent is not commonly known as the disputed domain name, nor is Respondent a licensee of Complainant. Further, Respondent has made habit of registering domain names containing famous marks and adding the “.email” gTLD, which cannot consist of a bona fide offering or a legitimate noncommercial or fair use.
3. Further, Respondent has failed to make an active use of the disputed domain name or provide any concrete evidence of demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use.
4. Respondent has engaged in bad faith registration and use. Respondent has engaged in a pattern of bad faith registrations and is attempting to commercially profit from a likelihood of confusion. Further, Respondent has failed to actively use the domain name. Lastly, Respondent had actual knowledge of Complainant’s trademark rights.
B. Respondent
1. Respondent makes no contentions with regard to Policy ¶ 4(a)(i).
2. Respondent has rights and legitimate interests. Respondent owns a legitimate business, which is providing certification of e-mail services, which will be free for both the sender and receiver of e-mails.
3. Respondent has rights and legitimate interests in the disputed domain name, which preclude a finding of bad faith. Respondent has also not registered or used the disputed domain name in bad faith according to Policy ¶ 4(b).
C. Additional Submissions
Complainant’s Additional Submission
Complainant contends that the mere assertion that the disputed domain name could be used is not a bona fide offering of goods or services. Otherwise, Complainant largely reasserts contentions made in the original complaint.
Respondent’s Additional Submission
Respondent reiterates contentions made in its response. Respondent’s bona fide offering of goods or services could be for the benefit of companies or private individuals, including families with the Emerson last name.
Complainant holds trademark rights for the EMERSON mark. Respondent’s domain name is confusingly similar to Complainant’s EMERSON mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <emerson.email> domain name, and that Respondent registered and uses the domain name 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.
Complainant has registered the EMERSON mark with numerous trademark authorities around the world, including the USPTO (e.g., Reg. No. 111,931, registered Aug. 15, 1916). The mark is used on or in connection with the sale of electric motors, electric fans, electric-powered pumps, and other electric-powered equipment. The registration with the USPTO is sufficient to establish rights in a trademark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
The <emerson.email> domain name is identical to Complainant’s mark because the domain name contains the entire mark and differs only by the addition of the gTLD “.email.” A gTLD does not distinguish a domain name from the mark at issue. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that the <emerson.email> domain name is identical to Complainant’s EMERSON mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent is not commonly known by the disputed domain name, nor is Respondent in possession of licensing rights that would allow him to use Complainant’s mark in domain names. “Giovanni Laporta” is listed as the registrant of record for the disputed domain name. The record is devoid of any evidence to indicate that Respondent is either commonly known by the disputed domain name or in possession of licensing rights. Under the circumstances, Respondent does have rights or legitimate interests under 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).
The domain name resolves to a blank webpage. The failure to use a domain name is evidence that a respondent lacks rights or legitimate interests within the meaning of the Policy. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Because the Panel finds that Respondent has failed to make active use of the domain name, the Panel holds that Respondent does not have rights or legitimate interests.
Respondent’s primary argument is that he has rights or legitimate interests in the domain name because he has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Specifically, Respondent argues he intends to use the disputed domain name as a backend, non-public email server in order to route emails for the storing of Metadata which will allow yoyo.email to certify delivery and receipt. Respondent has submitted an affidavit and personal reference as support of his claimed preparations to use the disputed domain name.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion as to its relationship with Complainant. Complainant argues that Internet users are likely to believe that the disputed domain name is sponsored by or affiliated with Complainant, and that Respondent presumably is commercially profiting in the process. Registration of a domain name for commercial gain which creates a likelihood of confusion with a registered mark consists of bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Thus, the Panel finds Respondent has acted in bad faith under Policy ¶ 4(b)(iv).
Complainant also argues that Respondent has failed to actively use the disputed domain name, and that this further exemplifies Respondent’s bad faith according to Policy ¶ 4(a)(iii). Complainant has provided a copy of the resolving webpage, which is blank. Failure to actively use a domain name has been held to amount to bad faith under Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”). Thus, the Panel finds that Respondent has engaged in bad faith under Policy ¶ 4(a)(iii).
Lastly, Complainant contends that in light of the fame and notoriety of its EMERSON mark, it is inconceivable that Respondent could have registered the <emerson.email> domain name without actual knowledge of Complainant's rights in the mark. The Panel agrees with Complainant that because the domain name is identical to Complainant’s mark it is clear that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name which amounts to bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds Complainant has satisfied 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 <emerson.email> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 1, 2015
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