DECISION

Eastman Chemical Company v. Mack COX

Claim Number: FA2003001887433

PARTIES

Complainant is Eastman Chemical Company (“Complainant”), represented by Naresh Kilaru of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, United States. Respondent is Mack COX (“Respondent”), United States.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <east-man.us>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

Terry F. Peppard as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on March 9, 2020; the Forum received payment on March 9, 2020.

On March 10, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by email to the Forum that the <east-man.us> 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 the U.S. Department of Commerce's usTLD Dispute Resolution Policy (the "Policy").

On March 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 2020 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@east-man.us. Also on March 10, 2020, 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 April 3, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

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 to the usTLD Dispute Resolution Policy ("Rules"). Therefore , the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant

Complainant is a global Fortune 500 company engaged in the manufacture and sale of chemicals, fibers, and plastics.

Complainant holds a registration for the EASTMAN trademark, which is on file with the United States Patent and Trademark Office ("USPTO") as Registry No. 556,354, registered March 18, 1952, and most recently renewed as of March 25, 2012.

Respondent registered the domain name <east-man.us> on January 7, 2020. The domain name is confusingly similar to Complainant's EASTMAN mark. Respondent has not been commonly known by the domain name. Complainant has not authorized Respondent to use the EASTMAN mark. Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.

Instead, Respondent uses the domain name to impersonate Complainant in an aggressive e-mail-based phishing scheme aimed at defrauding Complainant's customers by duping them into divulging sensitive information or financial data that would expose them to financial thievery, identity theft and other cyber crimes.

Respondent has no rights to or legitimate interests in the domain name.

Respondent has engaged in a pattern of bad faith registration and use of domain names, as demonstrated by its status as a respondent in several UDRP decisions in which it was found to have registered and used domain names in bad faith.

Respondent knew of Complainant's rights in the EASTMAN mark when it registered the domain name.

Respondent registered and uses the domain name in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

(1) the domain name registered by Respondent is substantively identical and confusingly similar to a trademark in which Complainant has rights; and

(2) Respondent has no rights to or legitimate interests in respect of the domain name; and

(3) The same domain name was registered and is being used by Respondent 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 or is being used in bad faith.

Given the similarity between the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the usTLD Policy, the Panel may draw upon UDRP precedent as applicable in rendering its decision.

In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent's failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see galaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [...] the Panel finds it appropriate to dismiss the Complaint").

Identical and/or Confusingly Similar

Complainant has rights in the EASTMAN trademark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Liberty Global Logistics, LLC v. damilola emmanuel tovary services limited, FA 1738536 (Forum August 4, 2017):

Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.

Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent's <east-man.us> domain name is both substantively identical and confusingly similar to Complainant's EASTMAN trademark. The domain name incorporates the mark in its entirety, merely adding a hyphen and the country code Top Level Domain ("ccTLD") ".us." These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, ADP, LLC. v. Ella Magal, FA 1773958 (Forum August 2, 2017):

Respondent's <workforce-now.com> domain name appropriates the dominant portion of Complainant's ... mark and adds a hyphen and the gTLD ".com." These changes do not sufficiently distinguish the disputed domain name from the ... mark.

See also Philip Morris USA Inc. v. Naveen Patnayak, FA 1731422 (Forum June 12, 2017):

[T]he addition of [the ccTLD ".us" is inconsequential to the claim of confusing similarity.

This is because a hyphen adds nothing of consequence to the meaning, nor does it change the phonetic character of, the result, and because every domain name requires a ccTLD or other TLD.

Rights or Legitimate Interests

Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <east-man.us> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):

Complainant must ... 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, ... the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.

Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent's failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent's failure to respond to a UDRP complaint allows a presumption that a complainant's allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iv), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.

We begin by noting that Complainant contends, and Respondent does not deny, that Respondent is neither the owner nor the beneficiary of a trademark or service mark that is identical to the <east-man.us> domain name. For this reason, Respondent cannot claim rights to or legitimate interests in the domain name under the provisions of Policy ¶ 4(c)(i).

We next observe that Complainant asserts, without objection from Respondent, that Respondent has not been commonly known by the <east-man.us> domain name, and that Complainant has not authorized Respondent to use the EASTMAN mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as "Mack Cox/ N/A," which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(iii). See, for example, Google LLC v. Bhawana Chandel I Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as "Shawana Chandel," and nothing in the record showed that that respondent was authorized to use a UDRP Complainant's mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under UDRP Policy ¶ 4(c)(ii) [the analogue of Policy ¶ 4(c)(ii)], that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).

Complainant proceeds to allege, again without objection from Respondent, that Respondent uses the <east-man.us> domain name to impersonate Complainant in operating an e-mail-based "phishing" scheme to defraud Complainant's customers by duping them into divulging sensitive information or financial data that would expose them to financial thievery or identity theft and other cyber crimes. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iv) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Emerson Electric Co. v. Adi/con Rocha, FA 1735949 (Forum July 11, 2017) (finding that a respondent's attempt to itself pass off as a UDRP complainant through the use of fraudulent e-mail messages did not constitute a bona fide offering of goods or services, as a consequence of which that respondent failed to show that it had rights to or legitimate interests in a challenged domain name as provided in UDRP Policy ¶¶ 4(c)(i) or (iii) [analogues of Policy ¶¶ 4(c)(ii) and (iv)]).

The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).

Registration or Use in Bad Faith

We are persuaded by the evidence that Respondent's use of the <east-man.us> domain name, as alleged in the Complaint, disrupts Complainant's business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent's bad faith in registering and using the domain name. See, for example, Capital One Fin. Corp. v. Howe, FA 289304 (Forum August 11, 2004) (finding bad faith registration and use where a respondent used a contested domain name fraudulently to acquire sensitive personal information from that complainant's clients).

We are also convinced by the evidence that Respondent knew of Complainant and its rights in the EASTMAN mark when it registered the <east-man.us> domain name. This further demonstrates Respondent's bad faith in registering it. See, for example, Yahoo! Inc. v. Butler, FA 744444 (Forum August 17, 2006) (finding bad faith registration where a respondent was "well-aware of' a UDRP complainant's mark at the time of its registration of a confusingly similar domain name).

For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

DECISION

Complainant having established all three elements required to be proven under the usTLD Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.

Accordingly, it is Ordered that the <east-man.us> domain name be forthwith

TRANSFERRED from Respondent to Complainant.

Terry F. Peppard, Panelist

Dated: April 6, 2020