DECISION
Emerson Electric Co. v. Losangelesnews Inc. / Los Angeles News
Claim Number: FA1808001800864
PARTIES
Complainant is Emerson Electric Co. (“Complainant”), Missouri, USA. Respondent is Losangelesnews Inc. / Los Angeles News (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emersonjobs.com>, registered with Sea Wasp, LLC.
PANEL
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.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on August 10, 2018; the Forum received payment on August 10, 2018.
On August 13, 2018, Sea Wasp, LLC confirmed by e-mail to the Forum that the <emersonjobs.com> domain name is registered with Sea Wasp, LLC and that Respondent is the current registrant of the name. Sea Wasp, LLC has verified that Respondent is bound by the Sea Wasp, 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 August 21, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 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@emersonjobs.com. Also on August 21, 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.
A purported Response was added to the Panelist portal on September 12, 2018.
The Response was received after the deadline to submit a response, therefore the Panel does not consider this Response to be in compliance with ICANN Rule #5(a) and/or the Annex to the Supplemental Rules.
On September 12, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Preliminary Issue: Consent to Transfer
The Forum was copied on documentation submitted from Respondent to Complainant, which is identified in this proceeding as “Other Correspondence.” In this document, Respondent purports to consent to the transfer of the <emersonjobs.com> domain name.
Complainant has explicitly expressed, in emails to the Forum, that it wishes to proceed with the UDRP process despite Respondent’s apparent consent to transfer. The Panel may find that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
Therefore, the Panel has decided that it would like to analyze the case under the elements of the UDRP.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
1. Complainant, Emerson Electric Co., is a diversified, global manufacturing and technology company. Complainant has rights in the EMERSON mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 111,931, registered Aug. 15, 1916). See Amend. Compl. Ex. A. Respondent’s <emersonjobs.com> domain name is confusingly similar to Complainant’s mark because the name wholly incorporates Complainant’s EMERSON mark, and is only differentiated by the addition of the generic term “jobs” and the “.com” generic top-level domain (“gTLD”).
2. Respondent lacks rights and legitimate interests in the <emersonjobs.com> domain name. Respondent is not authorized to use Complainant’s EMERSON mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to direct users to a website that features sexually-explicit, pornographic content.
3. Respondent registered and uses the <emersonjobs.com> domain name in bad faith. Respondent’s registration and use of the domain name is as part of a bad faith pattern of or cybersquatting and/or typosquatting registrations. Additionally, Respondent redirects internet users to a website that features sexually-explicit, pornographic content. Furthermore, Respondent had actual and constructive knowledge of Complainant’s rights in the EMERSON mark prior to registering and subsequently using the disputed domain name.
B. Respondent
1. Respondent failed to submit a timely response.
FINDINGS
1. Respondent’s <emersonjobs.com> domain name is confusingly similar to Complainant’s EMERSON mark.
2. Respondent does not have any rights or legitimate interests in the <emersonjobs.com> domain name.
3. Respondent registered or used the <emersonjobs.com> domain name in bad faith.
DISCUSSION
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 timely 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.”).
Identical and/or Confusingly Similar
Complainant claims to have rights in the EMERSON mark based upon its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish a complainant’s rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant provides a copy of its USPTO registration for the EMERSON mark (e.g., Reg. No. 111,931, registered Aug. 15, 1916). See Amend. Compl. Ex. A. Therefore, the Panel finds that Complainant has sufficiently demonstrated its rights in the EMERSON mark per Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <emersonjobs.com> domain name is confusingly similar to Complainant’s mark because the name wholly incorporates the EMERSON mark while adding a generic term and incorporating a gTLD. The addition of a generic term and a gTLD to a complainant’s mark may not sufficiently mitigate any confusing similarity between a disputed domain and the mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Here, Respondent wholly incorporates Complainant’s EMERSON mark, and adds the generic term “jobs” and the “.com” gTLD. Accordingly, the Panel concludes that Respondent’s <emersonjobs.com> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Rights or Legitimate Interests
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent lacks rights and legitimate interests in the <emersonjobs.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the EMERSON mark. Where a response is lacking, WHOIS information may be used to identify a respondent per Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from a complainant to use its mark may support a finding that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record identifies Respondent as “Losangelesnews Inc.” Furthermore, no information of the record indicates that Respondent was authorized to use Complainant’s EMERSON mark. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further alleges Respondent fails to use <emersonjobs.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant contends Respondent uses the disputed domain name to direct users to a website that features sexually-explicit, pornographic content. Use of a domain name to display adult-oriented content is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Tumblr, Inc. v. Srivathsan GK, FA1409001582401 (Forum Oct. 30, 2014) (“Consequently, the Panel finds that Respondent’s use of the disputed domain name for adult-oriented images also does not provide a bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the disputed domain name’s resolving website that displays adult content. See Amend. Compl. Ex. C. Accordingly, the Panel concludes that the Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Registration and Use in Bad Faith
Finally, Complainant argues that Respondent had actual and constructive knowledge of Complainant’s rights in the EMERSON mark prior to registering and using the <emersonjobs.com> domain name. While constructive notice of a complainant’s mark is insufficient for a finding of bad faith, evidence of the respondent’s actual knowledge of a complainant’s mark may indicate bad faith under Policy ¶ 4(a)(iii), and such knowledge can be presumed where the complainant’s mark is famous. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous). Complainant claims that its mark is famous based upon its numerous trademark registrations, and large volume of positive press concerning Complainant and the EMERSON mark. See Amend Compl. Ex. F. Consequently, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the mark prior to registration, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <emersonjobs.com> domain name be TRANSFERRED from Respondent to Complaint.
John J. Upchurch, Panelist
Dated: September 24, 2018
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