Eastman Chemical Company v. Gerald Hatu
Claim Number: FA1709001749821
Complainant is Eastman Chemical Company (“Complainant”), represented by Margaret Esquenet of Finnegan, Henderson, Farabow, Garret & Dunner, L.L.P., Washington D.C., USA. Respondent is Gerald Hatu (“Respondent”), Uganda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eastmanltd.com> (‘the Domain Name’), registered with Mesh Digital Limited.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 19, 2017; the Forum received payment on September 19, 2017.
On September 21, 2017, Mesh Digital Limited confirmed by e-mail to the Forum that the <eastmanltd.com> domain name is registered with Mesh Digital Limited and that Respondent is the current registrant of the name. Mesh Digital Limited has verified that Respondent is bound by the Mesh Digital Limited 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 September 21, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 2017 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@eastmanltd.com. Also on September 21, 2017, 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 October 15, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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’s contentions can be summarised as follows:
Complainant is a Fortune 500 company founded in 1920 and engaged in the global manufacture and sale of chemicals, fibres and plastics. Complainant owns trade mark registrations for EASTMAN, inter alia, in the USA in relation to chemicals and their applications. It owns Eastman.com.
The Domain Name, registered in 2017 points to a pirate web site where Respondent attempts to pass itself off as the official Eastman web site in order to defraud Complainant’s customers. The pirate site copies Complainant’s logos, registered trade marks, photographs, copyright content and distinctive trade dress changing only contact details.
The Domain Name is confusingly similar to Complainant’s mark incorporating it in its entirety adding only the generic abbreviation ‘ltd’ and the non distinguishing gTLD .com. The addition of generic terms and the gTLD are inconsequential when conducting an exercise of confusing similarity. In fact the addition of ‘ltd’ is likely to increase confusing similarity as it will lead consumers to think the registrant is Complainant.
Respondent has no rights or legitimate interests in the Domain Name. Operating a pirate web site to imitate Complainant cannot be a bona fide offering of goods and services. Respondent is not commonly known by the Domain Name and Complainant has not authorised Respondent to use its marks.
Respondent’s registration and use of the Domain Name constitutes bad faith as it is imitation to perpetuate fraud or phishing and disrupts Complainant with a competing business. The use of Complainant’s company name, logos, photographs and text provide an air of false legitimacy designed to fool customers. It is also creating a likelihood of confusion on the Internet for commercial gain. The use shows knowledge of Complainant and its business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a Fortune 500 company founded in 1920 and engaged in the global manufacture and sale of chemicals, fibres and plastics. Complainant owns trade mark registrations for EASTMAN, inter alia, in the USA in relation to chemicals and their applications. It owns Eastman.com. First use of the mark EASTMAN by its predecessors is recorded as 1884.
The Domain Name registered in 2017 has been used for a site mimicking the genuine site of Complainant.
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 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 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.”).
Identical and/or Confusingly Similar
Complainant is a provider of chemicals and is the owner of the EASTMAN trademark registered, inter alia in the USA for its products with first use by a predecessor recorded as 1884.
The Domain Name consists of a name identical to Complainant's registered mark EASTMAN plus the generic abbreviation ‘ltd’ meaning limited company and the gTLD .com The addition of the generic term ‘ltd’ does not serve to distinguish the Domain Name from Complainant's EASTMAN mark especially bearing in mind that its addition may lead people to believe the site is that of the well known EASTMAN company. The gTLD.com when it does not form part of Complainant’s trade mark and is used as a purely functional part of a domain name does not distinguish a domain name from a trade mark under the Policy. See Microsoft Corporation v Thong Tran Thanh, FA 1653187 (Forum Jan 21 2016)(determining that where confusing similarity exists where [a disputed domain name contains complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top level domain the differences between the domain name and its contained trade mark are insufficient to differentiate one from the other for the purposes of the Policy.)
The Panel finds that the Domain Name is confusingly similar to a mark in which Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
It is clear from the evidence that Respondent has used the site attached to the Domain Name to offer goods in competition with those of Complainant. It is clear from the content of the site that Respondent was aware of the significance of the name "EASTMAN" for chemicals at the time of registration as the site attached to the Domain Name mimics the official site of Complainant using its official logo. The usage is highly confusing in the opinion of the Panel and not fair. As such it cannot amount to the bona fide offering of goods and services. The use of Complainant’s logo shows an intention to be mistaken for Complainant and the name EASTMAN has come to have secondary meaning in the chemical world and be exclusively associated with Complainant such that its combination with the abbreviation ‘ltd’ in relation to a chemical site would undoubtedly be taken to mean the site was associated with Complainant by the majority of the business world. See Mortgage Research Centre LLC v Miranda, FA 993017 (Forum July 9, 2007)(‘Because Respondent in this case is also attempting to pass itself off as Complainant presumably for financial gain the Panel finds Respondent is not using the …domain name for a bona fide offering of goods or services pursuant to 4 ( c ) (i) or a legitimate noncommercial or fair use pursuant to 4 ( c ) (iii).
Respondent is not commonly known by the Domain Name and Complainant has not authorised Respondent to use its trademarks. Respondent has not answered the Complaint or given any explanation why it would be entitled to use Complainant’s mark in this way.
As such the Panel finds that Respondent’s use was not bona fide as this is understood under the Policy and it does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The content of Respondent’s web site, in particular the fact that it has used Complainant’s official logo on Respondent’s site makes it clear that Respondent was aware of Complainant’s rights at the time of registration. The use of a logo highly similar to Complainant’s logo would cause people to associate the website at the Domain Name with Complainant and its services. Using the EASTMAN trade mark in combination with the common abbreviation ‘ltd’ would in view of Complainant’s reputation for chemicals across the world cause many people to assume the web site was associated with Complainant.
Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site sufficient to satisfy paragraph 4 (b)(iv) of the Policy. See CAN Financial Corporation v William Thomson/CAN Insurance, FA1401001541484 (Forum Feb 28, 2014)(finding that Respondent had engaged in bad faith under Policy 4 (b)(iv) by using a confusingly similar domain name to attract internet users to its own competing site). This use is also disruptive use by a competitor and is, therefore, also bad faith under paragraph 4 (b)(iii) of the Policy. See Fitness International, LLC v Alistair Swodeck/Victor and Murray, FA 1506001623644 (Forum July 9, 2015) (where respondent offered the same services as Complainant and it was held this disrupted Complainant’s business under Policy 4 (b)(iii).)
As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <eastmanltd.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: October 17, 2017
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