Emerson Electric Co. v. Paul Parson / EMERSON SERVICE CO
Claim Number: FA2008001908221
Complainant is Emerson Electric Co. (“Complainant”), Missouri, USA. Respondent is Paul Parson / EMERSON SERVICE CO (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emersonelectricco.com>, registered with NameCheap, Inc..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 13, 2020; the Forum received payment on August 13, 2020.
On August 13, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <emersonelectricco.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 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@emersonelectricco.com. Also on August 17, 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 September 11, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <emersonelectricco.com> domain name is confusingly similar to Complainant’s EMERSON ELECTRIC mark.
2. Respondent does not have any rights or legitimate interests in the <emersonelectricco.com> domain name.
3. Respondent registered and uses the <emersonelectricco.com> domain name in bad faith.
B. Respondent failed to submit a response in this proceeding.
Complainant, Emerson Electric Co., holds a registration for the EMERSON ELECTRIC mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,645,568, registered May 21, 1991).
Respondent registered the <emersonelectricco.com> domain name on March 24, 2020, and uses it to host pay-per-click links and to impersonate Complainant in furtherance of an email phishing scheme.
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”).
The Panel finds that Complainant has rights in the EMERSON ELECTRIC mark under Policy ¶ 4(a)(i) based upon registration with the USPTO. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <emersonelectricco.com> domain name merely adds the generic company designation “co” and the “.com” gTLD to the EMERSON ELECTRIC mark. Under Policy ¶ 4(a)(i), the addition of generic or descriptive terms and a gTLD is insufficient to distinguish a domain name from a mark. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).); see also W. Union Holdings, Inc. v. XYZ, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the gTLD “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance). Thus, the Panel finds that Respondent’s <emersonelectricco.com> domain name is confusingly similar to Complainant’s EMERSON ELECTRIC mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 does not have rights or legitimate interests in the <emersonelectricco.com> domain name because Respondent is not commonly known by the disputed domain name and does not have permission to use Complainant’s EMERSON ELECTRIC mark. The WHOIS information for the disputed domain name identifies the registrant as “Paul Parson / Emerson Service Co.” However, Respondent provides no affirmative evidence in support of the “Emerson Service Co.” identity and no evidence in the record suggests Respondent is authorized to use Complainant’s EMERSON ELECTRIC mark. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name); see also Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the <emersonelectricco.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead hosts pay-per-click links at the disputed domain. The use of a disputed domain name to display commercial hyperlinks is generally not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”). Complainant provides a screenshot of the webpage at <emersonelectricco.com> showing third-party links. The Panel finds that this use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that Respondent also uses the <emersonelectricco.com> domain name to impersonate Complainant in furtherance of an e-mail phishing scheme. The use of an email address associated with a disputed domain name to pass off as a complainant in furtherance of phishing does not establish rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”). Complainant demonstrates that Respondent uses the disputed domain name to pass off as Complainant in emails seeking sensitive or financial information. Therefore, the Panel finds further evidence that Respondent’s lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <emersonelectricco.com> domain name in bad faith because Respondent creates a likelihood of confusion between itself and Complainant for commercial gain. Displaying third-party links in connection with a complainant’s mark evinces bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)). Thus, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant contends that Respondent’s use of the <emersonelectricco.com> domain name in connection with phishing is further evidence of bad faith. The Panel agrees and finds bad faith under Policy ¶ 4(a)(iii). See SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA14009001581255 (Forum Oct. 29, 2014) (“The Panel finds that Respondent’s use of the domain name’s e-mail suffix for fraudulent purposes illustrates Policy ¶ 4(a)(iii) bad faith.”).
Complainant argues that Respondent’s use of Complainant’s mark to impersonate Complainant shows that Respondent had actual knowledge of Complainant’s rights in the EMERSON ELECTRIC mark when it registered the disputed domain name. The Panel agrees and finds further bad faith under Policy ¶ 4(a)(iii). See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <emersonelectricco.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 14, 2020
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