DECISION
Emerson Electric Co. v. Anthony Mamabon
Claim Number: FA2004001892093
PARTIES
Complainant is Emerson Electric Co. (“Complainant”), represented by John M. Groves of Emerson Electric Co., United States. Respondent is Anthony Mamabon (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emer5on.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
PANEL
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.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on April 15, 2020; the Forum received payment on April 15, 2020.
On April 16, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <emer5on.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 April 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 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@emer5on.com. Also on April 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 May 11, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant:
1. Complainant, Emerson Electric Co., is a diversified, global manufacturing and technology company. Complainant has rights in the EMERSON mark based upon its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 111,931, registered Aug. 15, 1916.) See Amend. Compl. Ex. A. Respondent’s <emer5on.com> domain name is confusingly similar to the EMERSON mark as Respondent merely replaces the letter “s” with the number “5” and adds the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
2. Respondent does not have rights or legitimate interests in the <emer5on.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not granted Respondent permission or a license to use the EMERSON mark for any purpose. Additionally, Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent is using the disputed domain to pass off as Complainant in order to phish for users’ personal information. Furthermore, Respondent fails to make an active use of the disputed domain name.
3. Respondent registered and uses the <emer5on.com> domain name in bad faith. Respondent has demonstrated a pattern of bad faith registration and use. Respondent attempts to disrupt Complainant’s business by impersonating Complainant as part of an e-mail phishing scheme. Next, Respondent fails to make an active use of the disputed domain name. Further, Respondent is engaging in typosquatting. Finally, Respondent had actual knowledge of Complainant’s EMERSON mark and business prior to registration and during subsequent use.
B. Respondent:
1. Respondent failed to submit a response.
FINDINGS
1. Respondent’s <emer5on.com> domain name is confusingly similar to Complainant’s EMERSON mark.
2. Respondent does not have any rights or legitimate interests in the <emer5on.com> domain name.
3. Respondent registered or used the <emer5on.com> domain name in bad faith.
DISCUSSION
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”).
Identical and/or Confusingly Similar
Complainant claims rights in the EMERSON mark based upon its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in the mark pursuant to 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 a screenshot from a TESS search for its EMERSON mark (e.g. Reg. No. 111, 931, registered Aug. 15, 1916.) See Amend. Compl. Ex. A. Therefore, the Panel finds that Complainant has rights in the EMERSON mark per Policy ¶ 4(a)(i).
Next, Complainant asserts that the <emer5on.com> domain name is confusingly similar to the EMERSON mark as it contains the mark in its entirety, merely replaces the letter “s” for the number “5” and adds the “.com” gTLD. Misspelling of a complainant’s mark and adding a gTLD to the mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Kellogg North America Company v. james hoggins / freight, FA1909001863624 (Forum, Oct. 19. 2019) (finding that replacing the letter “O” with the number “0” and removing the letter “s” from the complainant’s KELLOGG trademark in the domain name <kell0gg.com> does “not substantially diminish the similarity between the domain name and Complainant's mark”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees with Complainant and find that the <emer5on.com> domain name is confusingly similar to the EMERSON mark per Policy ¶ 4(a)(i).
Rights or Legitimate Interests
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 has no rights or legitimate interests in the <emer5on.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the EMERSON mark in any way. 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). 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.). Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that respondent does not have rights or legitimate interests in 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 Panel notes that the WHOIS information of record identifies Respondent as “Anthony Mamabon,” and there is no other evidence to suggest Respondent was authorized to use the EMERSON mark or commonly known by the disputed domain name. See Amend. Compl. Ex. B. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent fails to use the <emer5on.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Complainant contends Respondent uses the disputed domain name to pass off as Complainant to conduct a phishing scheme. Passing off as a complainant to conduct a phishing scheme is further evidence that a respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) & (iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Here, Complainant contends that Respondent is using a confusingly similar domain name to create the impression that Respondent’s website and email is one that is authorized and administered by Complainant. Respondent set up a range of email addresses to target Complainant’s clients which sought to obtain wire payments from unsuspecting users. See Amend. Compl. Ex. G. Therefore, the Panel agrees that Respondent failed to use the <emer5on.com> domain name in connection with a bona fide offering of goods or services or for a legitimate non-commercial or fair use per Policy ¶¶ 4(c)(i) & (iii).
Furthermore, Complainant argues that Respondent fails to make an active use of the <emer5on.com> domain name. Failure to make active use of a domain name does not constitute as a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) & (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 page which currently features a “This page isn’t working” notice. See Amend. Compl. Ex. C. 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) & (iii).
Registration and Use in Bad Faith
Complainant argues that Respondent has registered and uses the <emer5on.com> domain name in bad faith. Specifically, Complainant argues Respondent engages in a pattern of bad faith registration by registering multiple domain names that infringe on Complainant’s EMERSON mark. Registration of other domain names which include variants of a complainant’s mark, may be evidence of bad faith under Policy ¶ 4(b)(ii). See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA 1538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)). Complainant contends that Respondent has also registered another domain name that infringes upon Complainant’s EMERSON mark, namely <emerson.tk>. Respondent has also used this domain name to engage in a phishing attack, wherein it seeks to impersonate Complainant’s employees in emails to encourage a sense of confusion among unsuspecting users, and deceive them into making wire payments. Thus, the Panel finds Respondent engages in a pattern of bad faith registration per Policy ¶ 4(b)(ii).
Additionally, Complainant alleges Respondent attempts to disrupt Complainant’s business for commercial gain. Specifically, Complainant argues Respondent is attempting to impersonate Complainant as part of an email phishing scheme, presumably for commercial gain. 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) and/or (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). As previously mentioned, Complainant claims Respondent uses email addresses associated with the disputed domain name to impersonate Complainant and send phishing e-mails to Complainant’s clients, presumably designed to solicit information under false pretenses. Complainant provides emails sent by Respondent regarding the fraudulent email scheme. See Amend. Compl. Ex. G. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant also asserts that Respondent fails to make an active use and is passively holding the <emer5on.com> domain name. Failure to make an active use 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 an inactive which currently features a “This site isn’t working,” notice. See Amend. Compl. Ex. C. Therefore, the Panel finds that Respondent’s inactive use of the disputed domain name indicates bad faith registration and use per Policy ¶ 4(a)(iii).
Next, Complainant argues that Respondent has engaged in typosquatting. Deliberately misspelling of a mark of another in a domain name, to take advantage of common typing errors made by Internet users may be evidence of bad faith under Policy ¶ 4(a)(iii). See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”) Here, Complainant contends that Respondent is attempting to capitalize on typing errors committed by Complainant’s customers as Respondent has replaced the “s” in EMERSON with the number “5”. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent registered the <emer5on.com> domain name with actual knowledge of Complainant’s EMERSON mark. Actual knowledge may be proven through a totality of circumstances surrounding the registration of the disputed domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). Complainant asserts that they rank 120 on the list of fortune 500 companies and 484 on the global list of 500 companies. Complainant’s marks are famous to countless customers around the world. Furthermore, given the fact that Respondent attempts to impersonate Complainant to solicit payments from Complainant’s customers, it undoubtedly knew of Complainant’s rights in the EMERSON mark. The Panel agrees that Respondent had actual knowledge of Complainant’s rights in the EMERSON mark when it registered and subsequently used the <emer5on.com> domain name, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <emer5on.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 22, 2020
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