Emerson Electric Co. v. archid garment ltd / archi manda
Claim Number: FA2007001904837
Complainant is Emerson Electric Co. (“Complainant”), Missouri. Respondent is archid garment ltd / archi manda (“Respondent”), California.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emerson-com.icu>, registered with NameSilo, LLC.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 20, 2020; the Forum received payment on July 20, 2020.
On July 20, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <emerson-com.icu> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 July 21, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 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@emerson-com.icu. Also on July 21, 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 August 13, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the EMERSON trademark and service mark acquired through its ownership of the portfolio of trademark and service mark registrations and at common law through long and continuous use of the mark since the enterprise was established in 1890 in St. Louis, Missouri (USA) as Emerson Electric Manufacturing Co.
In 1892 it became the first to sell electric fans in the United States. It quickly expanded its product line to include electric sewing machines, electric dental drills, and power tools. Today, Complainant is a diversified, global manufacturing and technology company with an Internet presence and offers a wide range of products and services in the industrial, commercial and consumer markets through its process management, industrial automation, network power, climate technologies, and commercial and residential solutions businesses with approximately 90,000 employees and over 200 manufacturing facilities worldwide.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s EMERSON mark as it captures the mark in its entirety simply adding the element “com”. Complainant submits that the mere addition of this generic term does not negate the confusing similarity between the disputed domain name and Complainant’s mark and its primary domain name <emerson.com>. See WIPO Jurisprudential Overview 3.0 at 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
Complainant adds that the relevant comparison is to be made only between the second-level portion of the disputed domain name and Complainant’s trademark and so the generic Top Level Domain (gTLD) extension <.icu> should not be considered.
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not commonly known by the disputed domain name and Respondent’s name, as it is recorded in the WHOIS record for the disputed domain name, does not resemble the disputed domain name in any way. See Instron Corp. v. Kaner, FA 0768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the Whois information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant adds that, having exclusive rights in the EMERSON trademark and service mark by virtue of its trademark and service mark registrations, it has not given Respondent any permission to use the mark in domain names, nor is Respondent sponsored by or affiliated with Complainant in any way. See United Way of America v. Alex Zingaus, FA 1036202 (Forum Aug. 30, 2007). 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)”).
Complainant submits that Respondent is using the confusingly similar domain name to create the impression that Respondent’s website and email address are authorized and administered by Complainant.
Complainant submits that the disputed domain name has been used to send a phishing email having the appearance of coming from Complainant’s employees. In this regard, Complainant refers to copy of said email, which had been adduced in evidence in an annex to the Complaint, and contends that Respondent intercepted an original email chain of correspondence from Complainant and introduced emails using the disputed domain name into the chain. Specifically, the emails, sent by Respondent using the disputed domain name “@emerson-com.icu” (in particular from “Helena.Cheong@emerson-com.icu”) sought to communicate with Complainant’s business associates about wire payments.
Complainant alleges that Respondent’s email goes so far as to include the full email signature (name, title, address and phone number) of Complainant’s employee.
Complainant submits that by using the disputed domain name to send such an email, Respondent is attempting to pass itself off as the Complainant in an attempt to ‘phish’ personal information from Complainant’s business associates.
Complainant argues that such use of the disputed domain name, presumably for commercial gain, and with devious, nefarious motives, clearly fails to constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See HOPE worldwide, Ltd. v. Jin, FA 0320379 (Forum Nov. 11, 2004) (defining “phishing” as fooling “Internet users into sharing personal financial data so that identities can be stolen, fraudulent bills are run up, and spam e-mail is sent”).
Complainant submits that the disputed domain name was registered and has been used in bad faith and argues that by registering the disputed domain name that contains Complainant’s EMERSON mark in its entirety, that is confusingly similar to Complainant’s trademark, as well as its <emerson.com> domain name, Respondent has demonstrated knowledge of Complainant’s branded business.
Moreover, Complainant argues that since it is shown that Respondent has used the disputed domain name to send phishing emails to Complainant’s business associates, it is therefore not possible to conceive of a plausible situation in which Respondent was unaware of Complainant’s brands at the time the disputed domain name was registered.
Complainant submits the record shows that as described above, the disputed domain name was registered and has been used the purposes of launching a phishing attack which is clear evidence of bad faith registration and use.
Additionally, Complainant notes that the disputed domain name currently resolves to an inactive webpage which it argues amounts to passive holding that constitutes bad faith registration pursuant to Policy ¶ 4(a)(iii). See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names”).
Furthermore, Complainant adds that at the time of initial filing of the Complaint, respondent had employed a privacy service to hide its identity, which past panels have held serves as further evidence of bad faith registration and use. See Dr. Ing. H.C. F. Porsche AG v. Domains by Proxy, Inc., D2003-0230 (WIPO May 16, 2003).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a is a diversified, global manufacturing and technology company and is the owner of a large portfolio of trademark and service mark registrations in numerous jurisdictions for the EMERSON mark
· United States registered trademark EMERSON, registration number 111,931, registered on August 15, 1916, on the Principal Register for goods in international classes 7, 9, 11, 12, 15;
· United States registered trademark EMERSON, registration number 1,331,669, registered on April 23, 1985 on the Principal Register for goods in international class 7;
· United States registered trademark EMERSON, registration number 1,742,773 registered on December 29, 1992 on the Principal Register for goods in international class 9;
· United States registered trademark EMERSON, registration number 1,795,612 registered on September 28, 1993 on the Principal Register for goods in international class 7;
· United States registered service mark EMERSON, registration number 2,621,862 registered on 2621862 on the Principal Register for services in international class 37;
· United States registered trademark EMERSON (Design) registration number 3,771,945 registered on April 6, 2010 on the Principal Register for goods in international class 9;
· European Union Trade Mark EMERSON, registration number 000100651, registered on March 5, 1999 for goods in classes 6, 7, 8, 9, 11, 12, 17 and 20.
Complainant has an established Internet presence and operates numerous websites including its primary website to which its domain name <emerson.com>, created on July 28, 1995 resolves.
The disputed domain name was registered on June 12, 2020. It resolves to an inactive webpage but has been used as an email address to send phishing emails.
There is no information available about Respondent which availed of a proxy service to conceal its identity, except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the Forum’s request for verification of the registration details of the disputed domain name in the course of this proceeding. The Registrar’s response disclosed the name of 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy 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”).
Complainant has adduced clear and convincing, uncontested evidence that it has rights in the EMERSON trademark acquired through its ownership of the portfolio of trademark and service mark registrations and at common law through long and continuous use of the mark by itself and its predecessors in title since 1890.
The disputed domain name consists of Complainant’s EMERSON mark in its entirety in combination with a hyphen, the element “com” and the gTLD <.icu> extension.
Complainant’s trademark is the initial, dominant, and only distinctive element in the disputed domain name. Neither the hyphen nor the “com” element, which in context creates an initial impression that it is part of the gTLD extension contribute any distinguishing characteristic. For the purposes of comparison this case the gTLD <.icu> extension may be ignored as it will be considered to be a technical necessity in this context.
This Panel finds therefore that Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not commonly known by the disputed domain name; that Respondent’s name as it is recorded in the WHOIS record for the disputed domain name does not resemble the disputed domain name in any way; that Complainant, having exclusive rights in the EMERSON trademark and service mark by virtue of its trademark and service mark registrations, has not given Respondent permission to use the mark in domain names, nor is Respondent sponsored by or affiliated with Complainant in any way; that Respondent is using the confusingly similar domain name to create the impression that Respondent’s website and email address are authorized and administered by Complainant; that the evidence adduced by Complainant shows that the disputed domain name has been used to impersonate Complainant and its employees; that Respondent is attempting to pass itself off as the Complainant in an attempt to ‘phish’ personal information from Complainant’s business associates; that such use of the disputed domain name clearly fails to constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
As Complainant has argued, it is implausible that the registrant of the disputed domain name was unaware of Complainant, its name, mark and reputation when the disputed domain name was chosen and registered. Not only is disputed domain name confusingly similar to Complainant’s mark and domain name, the uncontested evidence shows that on the balance of probabilities the disputed domain name was intentionally chosen and registered to create the potential for confusion and has been used in bad faith to send phishing emails to Complainant’s business associates.
This Panel finds therefore that the disputed domain name was registered in bad faith with Complainant’s mark in mind in order to take predatory advantage of Complainant’s reputation and goodwill for the purposes of confusing Internet users.
In an annex to the Complaint, Complainant has adduced copies of email correspondence which it alleges shows that the disputed domain name is being used by Respondent for the purposes of phishing:-
· on May 20, 2020 at 12:31 pm, an employee of Complainant sent an email to a client indicating that she intended to send an invoice per an attached confirmation of an order;
· on May 21, 2020 at 3:37 pm the employee sent a further email to the client attaching an e-invoice; on May 21, 2020 at 4:48 pm the client replied confirming that softcopy of the invoice was acceptable and provided calculations showing that the client was entitled to a refund in the sum of USD$ 27,941.01;
· on June 4, 2020 at 4:03, Complainant’s employee responded proposing an amended balance of USD$26,543.96 taking withholding tax into account and requesting the client’s bank details to set up the vendor account;
· on June 10, 2020 at 5:43 pm, the client replied requesting payment in the first proposed amount as the withholding tax had already been paid to the Malaysian government, a receipt was awaited and would be forwarded when received;
· on June 12 2020 at 10:23 Complainant’s employee responded noting the correct amount, repeating the request for the client’s bank details.
This exchange of email correspondence was intercepted by Respondent and on June 12, 2020 at 11:06 am email was sent by Respondent to the client using the disputed domain name from <Helena.Cheong@emerson-com.icu>, purporting to come from Complainant and stating:” We will remit to your Oceancare Corporation Sdn Bhd / MayBank. Hopefully by next week you will receive payment.”
This Panel finds that this uncontested evidence proves on the balance of probabilities that the disputed domain name is being used in bad faith to interfere with Complainant’s business and impersonate Complainant for the purposes of phishing.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in its application for transfer of 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-com.icu> domain name be TRANSFERRED from Respondent to Complainant.
_______________________________________
James Bridgeman SC
Panelist
Dated: August 14, 2020
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