Eastman Chemical Company v. Bradford Cornileus / Mack COX / Robert Lutz
Claim Number: FA2003001887977
Complainant is Eastman Chemical Company (“Complainant”), represented by Margaret A. Esquenet of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, District of Columbia, USA. Respondent is Bradford Cornileus / Mack COX / Robert Lutz (“Respondent”), Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <us-eastman.com>, <east-man.net>, <ëastman.com> and <us-eastman.co>, registered with NameSilo, LLC; 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.
Ho Hyun Nahm, Esq. as Panelist.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that all four domain names incorporate the EASTMAN mark, they were all registered within a month of each other, they are each used to perpetuate a similar phishing scheme through emails with an identical false signature, and three of the domain names are associated with an identical mailing address.
The Panel finds the disputed domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
Complainant submitted a Complaint to the Forum electronically on March 12, 2020; the Forum received payment on March 12, 2020.
On March 12, 2020; March 13, 2020, NameSilo, LLC; PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <us-eastman.com>, <east-man.net>, <ëastman.com>, and <us-eastman.co> domain names are registered with NameSilo, LLC; PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. NameSilo, LLC; PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the NameSilo, LLC; 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 March 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 6, 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@us-eastman.com, postmaster@east-man.net, postmaster@ëastman.com, postmaster@us-eastman.co. Also on March 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 April 9, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, Eastman Chemical Company, is in the business of manufacture and sale of chemicals, fibers, and plastics. Complainant has rights in the EASTMAN mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 574,245, registered May 12, 1953). The disputed domain names <us-eastman.com>, <east-man.net>, <ëastman.com>, and <us-eastman.co> are confusingly similar to Complainant’s mark since they each fully incorporate the EASTMAN mark, adding some combination of the geographically descriptive term “us”, a hyphen, and dots above the “e”, as well as a generic top-level domain (“gTLD”).
ii) Respondent does not have rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the disputed domain names and is not authorized or permitted to use Complainant’s EASTMAN mark. Additionally, Respondent fails to use the disputed domain names in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to impersonate Complainant in order to defraud Complainant’s customers.
iii) Respondent registered and uses the disputed domain names in bad faith because Respondent has displayed a pattern of registering infringing domain names in bad faith. Additionally, Respondent impersonates Complainant through emails as part of a fraudulent phishing scheme. Further, Respondent’s failure to make active use of the disputed domain names evidences bad faith. Respondent’s typosquatting, particularly with respect to the <ëastman.com> is also evidence of bad faith registration and use. Finally, Respondent has actual knowledge of Complainant’s rights in the EASTMAN mark.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain names <us-eastman.com>, <east-man.net>, <ëastman.com>, and <us-eastman.co> were registered on January 24, February 18, January 21, and February 19, 2020 respectively.
2. Complainant has established rights in the EASTMAN mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 574,245, registered May 12, 1953).
3. Respondent impersonates Complainant through emails as part of a fraudulent phishing scheme.
4. Respondent uses the disputed domain names to trick customers into providing private and/or financial data through fraudulent emails and purchase orders.
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 claims rights in the EASTMAN mark based upon registration with the USPTO. Registration with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). 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)). Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 574,245, registered May 12, 1953). Therefore, the Panel finds that Complainant has rights in the EASTMAN mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain names are confusingly similar to Complainant’s mark since they each fully incorporate the EASTMAN mark, adding some combination of the geographically descriptive term “us”, a hyphen, and dots above the “e”, as well as a gTLD. Addition of a geographic term is insufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.). Further, addition of hyphens and gTLDs is irrelevant in determining confusing similarity under Policy ¶ 4(a)(i). See ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”). Additionally, internationalized domain names that substitute a letter for another symbol may not overcome confusing similarity. See NIKE, Inc. and Nike Innovate, C.V. v. michal restl c/o Dynadot, FA1703001723952 (Forum May 11, 2017) (finding <nıke.com> [xn--nke-jua.com] confusingly similar to NIKE and noting, “Panels have determined that exchanging a letter in a mark for a Unicode character fails to distinguish a domain name for the purposes of a Policy ¶ 4(a)(i) analysis of confusing similarity”). Complainant notes that each of the four disputed domain names makes only minor changes such as adding the term “us”, a hyphen, and/or an internationalized character, as well as a gTLD. Thus, the Panel finds that the disputed domain names are identical and/or confusingly similar to Complainant’s EASTMAN mark under Policy ¶ 4(a)(i).
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”).
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the disputed domain names and is not authorized or permitted to use Complainant’s EASTMAN mark. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), especially when a privacy service is used. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may demonstrate that the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record lists the registrants as “Bradford Corelius / Mack COX / Robert Lutz” and Complainant contends that it did not authorize Respondent’s use of the EASTMAN mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the disputed domain names in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead uses the disputed domain names to impersonate Complainant in order to defraud Complainant’s customers and suppliers. Use of an email address associated with a disputed domain name to pass off as a complainant in furtherance of phishing is not indicative of rights or legitimate interests per 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 claims that Respondent registered the disputed domain names to pose as Complainant in order to perpetuate fraud. Complainant provides copies of emails and purchase orders related to the fraudulent practice. Thus, the Panel agrees that Respondent’s use of the disputed domain names is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 names.
Complainant argues that Respondent registered and uses the disputed domain names in bad faith because Respondent has displayed a pattern of registering infringing domain names in bad faith. Registration of multiple domain names incorporating the same mark may reflect a pattern of bad faith registration under Policy ¶ 4(b)(ii). See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). 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).
Complainant also argues that Respondent registered and uses the disputed domain names in bad faith because Respondent impersonates Complainant through emails as part of a fraudulent phishing scheme. Use of a disputed domain name to impersonate a complainant in furtherance of a fraudulent scheme may constitute bad faith pursuant to Policy ¶ 4(a)(iii). See Airbnb, Inc. v. JAMES GRANT, FA1760182 (Forum Dec. 28, 2017) (“Using a misleading email address to defraud unwary customers certainly constitutes bad faith.”). Complainant claims that Respondent uses the disputed domain names to trick customers into providing private and/or financial data through fraudulent emails and purchase orders. The Panel recalls that Complainant provides copies of these emails and purchase orders. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith under 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 <us-eastman.com>, <east-man.net>, <ëastman.com> and <us-eastman.co> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: April 15, 2020
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