O-I Glass, Inc. / Owens-Illinois General, Inc. v. John Doe as Holder of Domain Name <o-iglass.com> (“Respondent”).
Claim Number: FA2003001888544
Complainant is O-I Glass, Inc. and Owens-Illinois General, Inc. (“Complainant”), represented by John Berryhill, Pennsylvania. Respondent is John Doe as Holder of Domain Name <o-iglass.com>.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <o-iglass.com>, registered with Tucows Domains Inc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
PRELIMINARY ISSUES
MULTIPLE COMPLAINANTS
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: O-I Glass, Inc. and Owens-Illinois General, Inc. Complainants contend the following regarding standing in this matter: The two constituent entities in this matter constitute the enterprise generally known as “Owens-Illinois.” These entities share a common origin, inventor Michael Owens, who formed the Owens Bottle Machine Company in 1903 to commercialize his process for large scale production of glass bottles. In 1929, Owens-Illinois was formed from a merger with the Illinois Glass Company. See Amend. Compl. Ex. B.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and it will therefore treat them both as a single entity in this proceeding. For convenience the Panel will refer to the Complainants collectively as “Complainant.”
REQUEST FOR REDACTION OF RESPONDENT’S IDENTITY
Complainant contends that the named Respondent has been the victim of identity theft. Specifically, Complainant requests that the Panel exercise its power under Policy ¶ 4(j) to instruct the Forum to redact from the decision and the case caption any reference to the named Respondent.
The Panel will take the following rules and decisions into account in making a determination on whether redaction of the named Respondent’s identity is appropriate to be made.
According to Policy ¶ 4(j), “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” In Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Forum May 19, 2005), the panels omitted the respondents’ personal information from the decisions, pursuant to Policy ¶ 4(j), in an attempt to protect the respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to the respondents.
The Panel notes here that the power given to it by Policy ¶ 4(j) is a discretionary one that must be exercised judicially. In the regard the Panel would have to be satisfied that the case was an “exceptional” one and that it was appropriate to be made in all the circumstances.
ICANN Rule 16(b) makes provision for the publication of the full decision except if the Panel determines otherwise under Policy ¶ 4(j).
These provisions must also be considered in the light of Forum Supplemental Rule 15(b) that provides “All requests pursuant to Policy paragraph 4(j) and Rule 16(b) to have a portion of the decision redacted, must be made in the Complaint, the Response, or an Additional Submission that is submitted before the Panel’s decision is published.” (emphasis added). ICANN Rule 1 defines “respondent” as “the holder of a domain-name registration against which a complaint is initiated;” and Forum Supplemental Rule 1(d) further defines “the holder of a domain-name registration” as “the single person or entity listed in the WHOIS registration information at the time of commencement.”
The Panel notes that previous decisions have held that the registrar-confirmed registrant of a disputed domain name (per the WHOIS at commencement of the proceeding) as the proper respondent, notwithstanding the possibility that said respondent’s identity was stolen. See, e.g., Banco Bradesco S/A v. Gisele Moura Leite, D2014-0414 (WIPO Apr. 30, 2014). Despite this, the power to redact a portion of a decision is expressly conferred by Policy ¶ 4(j) and may be implemented by ICANN Rule 16 (b).
In this case, Complainant has explicitly requested such redaction in its Complaint and accordingly the requirement in FORUM Supplemental Rule 15 (b) has been met. Consequently, the Panel is able to determine whether the circumstances of the present case, including the claim of identity theft by Complainant, warrant the redaction of Respondent’s name and location from the Panel’s decision.
The Panel has considered this matter carefully, including what has been said by Complainant in support of its request. In the Complaint, Complainant has shown persuasively that whoever has been responsible for registering the domain name has stolen the identity of the person named as the Respondent and has also configured the domain name and its use so that it could be used to commit email fraud and be used for other improper purposes.
The Panel has therefore decided that in all the circumstances this is an exceptional case and that it is appropriate to redact Respondent’s name and information from the Panel’s decision. The Panel therefore determines for the purposes of Policy ¶ 4(j) and ICANN Rule 16( b) that this will be done.
Complainant submitted a Complaint to the Forum electronically on March 17, 2020; the Forum received payment on March 17, 2020.
On March 17, 2020, Tucows Domains Inc. confirmed by e-mail to the Forum that the <o-iglass.com> domain name is registered with Tucows Domains Inc. and that the Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 March 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 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@o-iglass.com. Also on March 19, 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 14, 2020, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions
Complainant, O-I Glass, Inc. and Owens-Illinois General, Inc., is the world’s largest manufacturer of glass containers, uses the trade name “O-I” to align its various global operations under a single brand, and has recently re-organized around a primary corporate name of OI Glass Inc. See Amend. Compl. Ex. B. Complainant has rights in the O-I mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,040,415, registered Jun.1, 1976). See Amend Compl. Ex. D. Respondent’s <o-iglass.com> domain name is confusingly similar to Complainant’s O-I mark as Respondent incorporates the mark in its entirety, merely adding the word “glass.”
Respondent has no rights or legitimate interests in the <o-iglass.com> domain name. Respondent is not licensed or authorized to use Complainant’s O-I mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the original Respondent was preparing to use the disputed domain name in connection with an email phishing scheme. In addition, Respondent fails to make an active use of the disputed domain name.
The <o-iglass.com> domain name was registered and is being used in bad faith. The original Respondent was preparing to use the disputed domain name in connection with an email phishing scheme. Additionally, Respondent fails to make an active use of the disputed domain name. Furthermore, the original Respondent registered the disputed domain name using false or misleading WHOIS information.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the manufacture of glass containers and the provision of related goods and services.
2. Complainant has established its trademark rights in the O-I mark through its registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,040,415, registered Jun.1, 1976).
3. Respondent registered the <o-iglass.com> domain name on August 13, 2018.
4. Respondent uses the disputed domain name in connection with an email phishing scheme and otherwise fails to make an active use 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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the O-I mark based upon registration of the mark with the USPTO (e.g., Reg. No. 1,040,415, registered Jun.1, 1976). See Amend Compl. Ex. D. Registration of a mark with the USPTO may be sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the O-I mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s O-I mark. Complainant argues Respondent’s <o-iglass.com> domain name is confusingly similar to the O-I mark, as the name incorporates the mark in its entirety along with the term “glass.” The Panel notes that Respondent also appends a “.com” generic top-level domain (“gTLD”) onto Complainant’s mark. Such changes may not be sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). The Panel therefore determines the <o‑iglass.com> domain name is confusingly similar to the O-I mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s O-I trademark and to use it in its domain name, adding the generic word “glass” which does not negate the confusing similarity between the domain name and the trademark;
(b) The <o-iglass.com> domain name was registered on August 13, 2018;
(c) The original Respondent was preparing to use the disputed domain name in connection with an email phishing scheme and for other improper purposes. Respondent otherwise fails to make an active use of the disputed domain name;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <o‑iglass.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the O-I mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the disputed domain name as “John Doe as Holder of Domain Name <o-iglass.com>” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. Complainant contends that the actual registrant is unknown to the Complainant, that it has engaged in identity theft, and requests that the Panel exercise its power under UDRP Rule 16(b) to redact from the decision and the case caption any reference to “John Doe as Holder of Domain Name <o-iglass.com>”. The Panel finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <o‑iglass.com> domain name;
(f) Complainant contends that Respondent has no rights or legitimate interests in the <o‑iglass.com> domain name, because Respondent has not used and does not use the disputed domain name for any legitimate purpose. A respondent that fails to use the disputed domain name actively may not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Complainant provides a screenshot of the disputed domain name’s resolving website, displaying a default registrar landing page including the announcement “Welcome to the future home of www.o-iglass.com.” See Amend. Compl. Ex. H. The Panel therefore finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii);
(g) Complainant contends that Respondent fails to make an active use of the disputed domain name. Failure to make active use of a domain name does constitute as a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Michelin North America, Inc. v. Energie Media Group, FA 451882 (Forum Aug. 7, 2012). In Michelin North, the panel found that inactive use, or “passive holding,” of the disputed domain name by a respondent “permits the inference that [the respondent] lacks rights and legitimate interests in the domain names.” Here, Complainant provides screenshots of the disputed domain name which resolves to an inactive parked webpage. See Amend. Compl. Ex. H. The Panel agrees with Complainant that this use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that the <o‑iglass.com> domain name has been registered and used in bad faith because the original Respondent was probably preparing to use the disputed domain name in furtherance of an email phishing scheme and for other improper purposes. A respondent’s use of a domain name to impersonate a complainant in furtherance of a fraudulent scheme may constitute bad faith pursuant to Policy ¶ 4(b)(iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the Respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)). Complainant argues that an “@o‑iglass.com” email address associated with the disputed domain name is potentially being used to impersonate Complainant and to send phishing e-mails to Internet users, presumably designed to solicit information under false pretenses. See Amend. Compl. Exs. I–K. The Panel therefore finds that such a registration and use of the disputed domain name is in bad faith per Policy ¶ 4(b)(iii).
Secondly, Complainant submits that Respondent fails to make an active use and is passively holding the domain name. Failure to make an active use of a domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum February 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”). As noted previously, Complainant provides screenshots of the disputed domain name which resolves to a parked inactive website. See Amend. Compl. Ex. H. Therefore, the Panel finds that the inactive use of the disputed domain name indicates bad faith registration and use per Policy ¶ 4(a)(iii).
Thirdly, Complainant contends that bad faith registration of the <o‑iglass.com> is also demonstrated by the original Respondent effecting the registration using false WHOIS information. Providing false or misleading information in connection with registration of a domain name may be evidence of bad faith under Policy ¶ 4(a)(iii). See CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1504001614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”). Complainant has shown that “John Doe as Holder of Domain Name <o-iglass.com>” who is named as Respondent has been the victim of identity theft and that whoever was instrumental in registering the domain name provided false WHOIS information. The Panel therefore finds that the <o‑iglass.com> domain name was registered in bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <o-iglass.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 16, 2020
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