Emerson Electric Co. v. Philip Smith
Claim Number: FA1807001796924
Complainant is Emerson Electric Co. (“Complainant”), Missouri, USA. Respondent is Philip Smith (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emerson-sg.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 16, 2018; the Forum received payment on July 16, 2018.
On July 18, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <emerson-sg.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 2018 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-sg.com. Also on July 18, 2018, 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 August 10, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Emerson Electric Co., is a global manufacturing and technology company. Complainant uses its EMERSON mark to promote its products and services and established rights in the mark based by its registration with the United States Patent and Trademark Office ("USPTO”).
Respondent’s <emerson-sg.com> domain name is confusingly similar to Complainant’s mark because it merely adds a hyphen, a geographical term, and the generic top-level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the <emerson-sg.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its EMERSON mark in any fashion. Respondent is also not commonly known by the disputed domain name as the WHOIS information of record lists “Philip Smith” as the registrant. Respondent is not using the <emerson-sg.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to pass off as Complainant and send emails impersonating Complainant’s employee for the purpose of soliciting payments from Complainant’s customers. Further, the disputed domain name resolves to an inactive site.
Respondent registered and uses the <emerson-sg.com> domain name in bad faith. Respondent established a pattern of bad faith registration by registering multiple domain names that infringe upon third parties’ trademark rights. Further, Respondent uses the <emerson-sg.com> domain name for the purpose of disrupting Complainant’s business and creating confusion with Complainant’s mark for commercial gain. Respondent also had actual knowledge of Complainant’s rights in the EMERSON mark prior to registering the disputed domain name. Moreover, the disputed domain name resolves to an inactive website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark for EMERSON.
Respondent is not affiliated with Complainant and had not been authorized to use the EMERSON mark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired trademark rights in EMERSON.
Respondent uses the <emerson-sg.com> domain name to host email that pretends to originate from Complainant in furtherance of a scheme to have third parties direct funds to a bank account actually controlled by Respondent.
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 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’s trademark registration of the EMERSON mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i)”).
The <emerson-sg.com> domain name incorporates Complainant’s entire EMERSON mark. The mark is followed by a hyphen and the geographically descriptive term “sg” (Singapore), with the top level domain name “.com” appended thereto. The resulting differences between the at-issue domain name and Complainant’s mark are insufficient to distinguish the two for the purposes of the Policy. In fact the use of the term “sg” suggests Complainant’s business operations in Singapore and thus adds to any confusion between Complainant’s trademark and Respondent’s domain name. Therefore, the Panel finds that Respondent’s <emerson-sg.com> domain name is confusingly similar to the Complainant’s EMERSON mark under Policy ¶ 4(a)(i). See Illumina, Inc. v. Jacquie Ross / Illumina, Inc., FA 1780093 (Forum May 7, 2018) (“In fact the inclusion of the term “us” in the domain name is somewhat suggestive of Respondent’s United States business operations. Therefore, incorporating the term “us” into the at-issue domain name only adds to any confusion resulting from the use of Complainant’s ILLUMINA trademark in the domain name.”); see also, Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond and since as discussed below there is no evidence supporting a finding pursuant to Policy ¶ 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “Philip Smith” as the at-issue domain name’s registrant. Moreover, the record before the Panel contains no evidence that suggests Respondent is otherwise commonly known by the <emerson-sg.com> domain name. The Panel thus concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Further, Respondent uses the at-issue domain name to pass itself off as Complainant. In email to third parties, Respondent fraudulently directs payments intended for Complainant to Respondent’s account. Using email dressed up to appear to be from Complainant’s employees, Respondent urges that the recipient send payments meant for Complainant to a bank account benefiting Respondent. Respondent’s use of the confusingly similar domain name in this manner is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the at-issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“Passing off as a complainant through e-mails is evidence that a respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) & (iii).”); see also Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”).
In light of the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As discussed above regarding rights and legitimate interests, Respondent uses the <emerson-sg.com> domain name to pass itself off as Complainant so that it may misdirect funds intended for Complainant to a bank account presumably controlled by Respondent. Respondent’s use of the domain name in this manner shows Respondent’s bad faith registration and use of the at-issue domain name pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the Respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)).
Next, by registering multiple domain names that apparently infringe third party trademarks, i.e. <abbottt.com>, <bridgestone-my.com>, <chauvin-arnoux-cn.com>, and <hitachltransport-eu.com>, Respondent establishes a pattern of bad faith domain name registration and use which suggests Respondent’s bad faith in the instant case under Policy ¶ 4(b)(ii). See Hachette Filipacchi Presse v. Fortune Int'l Dev., FA 96685 (Forum Apr. 6, 2001) (finding that where the respondent has registered over 50 domain names that correspond to different well-known trademarks, evidence of a pattern exists).
Finally, Respondent had actual knowledge of Complainant’s rights in the EMERSON trademark before registering the <emerson-sg.com> domain name. Respondent’s prior knowledge is evident from the notoriety of Complainant’s EMERSON trademark and from the fact that Respondent uses the domain name to host email which appears to originate from Complainant in order to facilitate fraud. Registering and using a confusingly similar domain with knowledge of Complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (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).
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-sg.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 13, 2018
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