Eastman Chemical Company v. Mustapha Jatta
Claim Number: FA2012001924341
Complainant is Eastman Chemical Company (“Complainant”), represented by Jonathan Uffelman of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, District of Columbia, USA. Respondent is Mustapha Jatta (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eastsmans.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 9, 2020; the Forum received payment on December 9, 2020.
On December 10, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <eastsmans.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 December 14, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 4, 2021 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@eastsmans.com. Also on December 14, 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 January 7, 2021 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 EASTMAN trademark and service mark established through its ownership of its portfolio of registered trademarks described below and its extensive goodwill that it has established since the company was founded in 1920. It has grown to a USD$9.3 billion business with an international reputation, having approximately 14,500 global employees, more than 50 manufacturing locations, and several sales offices around the globe serving customers in approximately 100 countries.
Complainant alleges that the disputed domain name <eastsmans.com> is confusingly similar to Complainant’s EASTMAN marks because it incorporates Complainant’s EASTMAN mark in its entirety, adding only the letter “s” twice, together with the non-distinguishing generic Top Level Domain (“gTLD “) extension <.com>.
Complainant argues that such changes are not sufficient to distinguish the disputed domain name from Complainant’s EASTMAN marks. Citing Lockheed Martin Corporation v. Meghan Russo / Lockheed Martin, Case No. FA2004001891540 (Forum May 12, 2020) (“Respondent’s <lockheedsmartins.com> domain name is confusingly similar to Complainant’s LOCKHEED MARTIN mark as it incorporates the mark in its entirety, adding the letter ‘s’ twice and the inconsequential ‘.com’ generic top-level domain, which may be disregarded.”).
Complainant also alleges that Respondent has no rights or legitimate interest in the disputed domain name submitting that Respondent is not, and has not been, commonly known by the disputed domain name and Complainant has not authorized Respondent to use its EASTMAN marks. Citing Giant Eagle, Inc. v. Giant Eagle/Giant Eagle Inc., Case No. FA1410001586562 (Forum Dec. 6, 2014) (“The WHOIS information lists ‘Giant Eagle’ of ‘Giant Eagle Inc’ as the registrant. Nevertheless, there is no evidence of any outside association between Respondent and the ‘Giant Eagle Inc’ name beyond Respondent’s own self-serving association. Accordingly, the Panel holds that Respondent is not commonly known by the gianteagleinc.com> name pursuant to Policy ¶ 4(c)(ii).”).
Complainant further alleges that the disputed domain name <eastsmans.com> is a typosquatted version of Complainant’s EASTMAN mark, adding only the letter “s” twice. Citing Eastman Chem. Company v. Official Ksl, Case No. FA2003001888013 (Forum Apr. 13, 2020) (“Complainant alleges that Respondent is engaged in typosquatting by duplicating the EASTMAN mark with a slight deviation. Typosquatting provides additional evidence that a respondent lacks rights and legitimate interests in a domain name pursuant to Policy ¶ 4(a)(ii).”).
Referring to a chain of email correspondence which, redacted for privacy, has been adduced in evidence as an exhibit to the Complaint, which shows that the disputed domain name is being used as an email address misleadingly purporting to impersonate an employee of Complainant in correspondence with a third party, Complainant alleges that Respondent is using the disputed domain name to perpetrate an email phishing scheme aimed at defrauding Complainant, its customers, and/or suppliers and investors which cannot be a bona fide offering of goods or services or a legitimate noncommercial or fair use. Citing inter alia Eastman Chem. Company v. Eugene Lawrence, Case No. FA2005001896540 (Forum June 17, 2020) (“Respondent uses the disputed domain name to send and receive fraudulent emails, which use is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).”).
Complainant further alleges that the disputed domain name was registered and is being used in bad faith arguing that given the fame of Complainant’s registered trademark EASTMAN; Complainant’s long-standing use of the EASTMAN mark; the fact that the disputed domain name is confusingly similar to Complainant’s EASTMAN mark; and the fact that Respondent uses the disputed domain name to impersonate Complainant in order to perpetuate a fraud on Complainant, its customers, and/or suppliers and investors, it follows that the registrant undoubtedly knew of Complainant’s rights in the EASTMAN mark before registering the disputed domain name.
Complainant argues that by registering the disputed domain name with knowledge of Complainant’s rights in the EASTMAN mark, Respondent acted in bad faith. Complainant cites for example Eastman Chem. Company v. Official Ksl, Case No. FA2003001888013 (Forum Apr. 13, 2020) (“Complainant argues that in light of: (1) Complainant’s federal registrations of its EASTMAN marks; (2) the fame of Complainant’s EASTMAN marks; (3) Complainant’s long-standing use of the EASTMAN marks; (4) the fact that the domain name is confusingly similar to Complainant’s EASTMAN mark; and (5) the fact that Respondent uses the domain name to impersonate Complainant in order to perpetuate a fraud on Complainant and its customers, Respondent undoubtedly knew of Complainant’s rights in the EASTMAN mark prior to registering the disputed domain name. The Panel agrees and finds Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Complainant refers to the above-mentioned email correspondence exhibited in an annex to the Complaint and adds that Respondent registered and uses the disputed domain name to impersonate Complainant in order to acquire personal, business, or financial information from consumers, or to otherwise perpetuate fraud. See Eastman Chem. Company v. Eugene Lawrence, Case No. FA2005001896540 (Forum June 17, 2020) (“Complainant claims that Respondent masquerades as Complainant to fraudulently solicit contracts from third-party businesses. Complainant provides copies of Respondent’s emails as an example of Respondent’s bad faith activity. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).”).
Complainant further submits that Respondent’s registration of a typosquatted version of Complainant’s EASTMAN mark is itself evidence of its bad-faith registration and use of the disputed domain name. Citing for example Eastman Chem. Company v. Official Ksl, Case No. FA2003001888013 (Forum Apr. 13, 2020) (“Complainant contends Respondent engages in typosquatting. Misspelling of a complainant’s mark in order to commercially benefit from a confusing similarity between a disputed domain name and the mark can evince bad faith under Policy ¶ 4(a)(iii).”)
In addition Complainant argues that because this email phishing scheme is so similar to prior attacks Complainant has addressed in the past ten months, Complainant believes this is part of the same Respondent’s ongoing pattern of bad-faith registration and use of EASTMAN-formative domain names under Policy ¶ 4(b)(ii). See Eastman Chem. Company v. Bradford Cornileus / Mack COX / Robert Lutz, Case No. FA2003001887977 (Forum Apr. 15, 2020) (“Complainant notes that Respondent has registered four domain names in this proceeding that incorporate the EASTMAN mark, as well as one additional domain name that is the subject of a separate proceeding. Therefore, the panel finds bad faith registration under Policy ¶ 4(b)(ii).”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a United States registered Fortune 500 corporation, engaged in the manufacture and sale of chemicals, fibers, and plastics and is the owner of the following portfolio of registered trademarks:
· United States registered trademark EASTMAN registration number 556,354, registered on the Principal Register on March 18, 1952 in for goods in international class 4;
· United States registered trademark EASTMAN registration number 574, 245, registered on the Principal Register on May 12, 1953 for goods in international class 5;
· United States registered trademark EASTMAN registration number 631,434, registered on the Principal Register on July 24, 1956 for goods in international class 1;
· United States registered trademark EASTMAN registration number 850,818, registered on the Principal Register on June 18, 1968 for goods in international class 1;
· United States registered service mark EASTMAN registration number 2,326,330 registered on the Principal Register on March 7, 2000 for goods in international class 1.
The disputed domain name <eastsmans.com> was registered on November 11, 2020.
There is no information available about Respondent except for that which is 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.
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, convincing and uncontested evidence of its claimed rights in the EASTMAN trademark and service mark established through its ownership of its portfolio of registered trademarks described above and the extensive goodwill that it has established since the company was founded in 1920 growing to a global business with a USD$9.3 billion annual revenue and having approximately 14,500 global employees in approximately 100 countries across the world.
The disputed domain name <eastsmans.com> consists of Complainant’s EASTMAN marks in its entirety with the addition of the letter “s” twice in combination with the gTLD extension <.com>.
Complainant’s trademark is recognizable within the disputed domain name, and to any observer, the additional letter “s” according twice would not distinguish the disputed domain name from Complainant’s mark. The gTLD <.com> extension may be ignored for the purposes of comparison in this case as on the balance of probabilities it would be recognized as a necessary technical element for a domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the EASTMAN mark in which Complainant has rights. Complainant has therefore succeeded in establishing 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 interest in the disputed domain name submitting that
· Respondent is not, and has not been, commonly known by the disputed domain name;
· Complainant has not authorized Respondent to use its EASTMAN mark;
· the disputed domain name <eastsmans.com> is a typosquatted version of Complainant’s EASTMAN mark, adding only the letter “s” twice;
· a chain of email correspondence which has been adduced in evidence in an exhibit to the Complaint shows that the disputed domain name is being used as an email address to misleadingly and improperly impersonate Complainant in an email phishing scheme aimed at defrauding Complainant, its customers, and/or suppliers and investors which cannot be a bona fide offering of goods or services or a legitimate noncommercial or fair use.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights to legitimate interests in a disputed domain name the burden of production shifts to the respondent to show such rights. Respondent has failed to respond to this Complaint and is therefore failed to discharge the burden of production and therefore this Panel must find that Respondent has no right to legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii)
Given the international reputation of Complainant and its extensive goodwill in the EASTMAN mark built by Complainant’s long-standing use; that the disputed domain name is confusingly similar to Complainant’s EASTMAN mark, this Panel finds that on the balance of probabilities the disputed domain name was intentionally chosen and registered in order to target Complainant and to take predatory advantage of its goodwill in the EASTMAN mark.
This Panel finds that the registrant of the disputed domain name engaged in an act of typosquatting by adding the letter “s” twice to Complainant’s mark in order to form a domain name to be used to confuse Internet users. The disputed domain name was therefore registered in bad faith.
Complainant has also adduced clear, credible and uncontested evidence that the disputed domain name has been used by Respondent to impersonate Complainant in an endeavor to perpetrate a phishing scam on Complainant, its customers, and/or suppliers and investors. This Panel finds therefore that the disputed domain name has been used in bad faith.
As this Panel has found that the disputed domain name has been both registered and is being used in bad faith Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in this application in this proceeding.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <eastsmans.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: January 8, 2021
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