DECISION

 

Emerson Electric Co. v. check log101 / check log101 101

Claim Number: FA2004001892094

 

PARTIES

Complainant is Emerson Electric Co. (“Complainant”), represented by John M. Groves of Emerson Electric Co., US.  Respondent is check log101 / check log101 101 (“Respondent”), Nigeria.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <emersons.tech>, registered with Hostinger, UAB.

 

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, Hostinger, UAB confirmed by e-mail to the Forum that the <emersons.tech> domain name is registered with Hostinger, UAB and that Respondent is the current registrant of the name.  Hostinger, UAB has verified that Respondent is bound by the Hostinger, UAB 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 21, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 11, 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@emersons.tech.  Also on April 21, 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 13, 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 is a global manufacturing and technology company. Complainant has rights in the EMERSON mark through its registration of the mark with multiple trademark agencies, including the European Union Intellectual Property Office (“EUIPO”) and the United States Patent and Trademark Office (“USPTO”) (e.g. USPTO Reg. No. 111,931, registered Aug, 15, 1916). See Amend. Compl. Ex. A. Respondent’s <emersons.tech> domain name is identical or confusingly similar to Complainant’s mark as it differs from Complainant’s mark by only a single letter and a generic top-level domain (“gTLD”).

2.    Respondent lacks rights or legitimate interests in the <emersons.tech> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name and email to create the impression of authorization and administration by Complainant and to pass off as various employees of Complainant. The disputed domain name resolved to a blank webpage that lacks content.

3.    Respondent registered and uses the <emersons.tech> domain name in bad faith. Respondent uses the disputed domain name for the purpose of launching a phishing attack by impersonating Complainant’s employees and sending fraudulent emails. The disputed domain name does not resolve to an active webpage. Respondent registered the disputed domain name with actual knowledge of Complainant’s trademark rights.

 

B.   Respondent:

1.    Respondent failed to submit a response in this proceeding.

 

FINDINGS

1.    Respondent’s <emersons.tech> domain name is confusingly similar to Complainant’s EMERSON mark.

2.    Respondent does not have any rights or legitimate interests in the <emersons.tech> domain name.

3.    Respondent registered or used the <emersons.tech> 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 asserts rights in the EMERSON mark based on registration with multiple trademark agencies (e.g. USPTO Reg. No. 111,931, registered Aug, 15, 1916). See Amend. Compl. Ex. A. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). Accordingly, the Panel finds that Complainant has established rights in the EMERSON mark for the purposes of Policy ¶ 4(a)(i).

 

Complainant next argues that Respondent’s <emersons.tech> domain name is identical or confusingly similar to Complainant’s mark as it differs from Complainant’s mark by only a single letter and a generic top-level domain (“gTLD”). The addition of a single letter and a gTLD fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank’); see also Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark as the domain name merely omits the “e” and “r” from the mark while adding the “.com” gTLD suffix). The disputed domain name consists of Complainant’s mark and the letter “s” and the “.tech” gTLD. The Panel therefore finds that the <emersons.tech> domain name is confusingly similar to the EMERSON mark under 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 Respondent lacks rights or legitimate interests in the <emersons.tech> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “check log101/check log101 101,” and there is no other evidence to suggest that Respondent was authorized to use the EMERSON mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

Respondent fails to use the <emersons.tech> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name and email to create the impression of authorization and administration by Complainant and to pass off as various employees of Complainant. Use of a disputed domain name to pass off as a complainant via email may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (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 Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1403001550388 (Forum May 5, 2014) (“Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers. The domain name also resolved to a website similar to Complainant's website. The Panel found that such actions precluded a bona fide offer or fair use.”). Complainant provides screenshots of emails purportedly sent by respondent using the disputed domain name impersonating actual employees of Complainant. See Amend. Compl. Ex. G. Therefore, the Panel finds Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).

 

Complainant also argues Respondent lacks rights and legitimate interest in the <emersons.tech> domain name as the disputed domain name resolved to a blank webpage that lacks content. The failure to make active use of a disputed domain name can show a lack or rights or legitimate interest per Policy ¶ 4(a)(ii). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”). Complainant provides a screenshot of the resolving webpage of the disputed domain name which displays a blank webpage. See Amend. Compl. Ex. C. The Panel therefore finds Respondent lacks rights or legitimate interest in the disputed domain name per Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant argues Respondent currently holds several other domain names that misappropriate trademarks of other well-known brands and businesses, evidencing bad faith. Registration of multiple infringing domain names can show a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Blue Diamond Growers v. L Wood, FA 1464477 (Forum June 7, 2017) (finding evidence that the respondent had previously registered domain names infringing on famous third-party marks established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Complainant provides the Whois information for numerous other domain names held by Respondent which include other famous marks. See Amend. Compl. Ex. H. The Panel therefore finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(ii).

 

Complainant contends Respondent registered and uses the <emersons.tech> domain name in bad faith as Respondent uses the disputed domain name for the purpose of launching a phishing attack by impersonating Complainant’s employees and sending fraudulent emails. Passing off as an employee of a complainant in furtherance of phishing can show bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also Amazon Technologies, Inc. v. jaskima smith, FA 1750160 (Forum Oct. 26, 2017) (finding the respondent registered and used the disputed domain name in bad faith to pass off as the complainant in an attempt to gain personal information from users who mistakenly access the website). The Panel recalls Complainant provides screenshots of emails purportedly sent by respondent using the disputed domain name impersonating actual employees of Complainant. See Amend. Compl. Ex. G. The Panel therefore finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) or (iv).

 

Complainant argues Respondent registered and uses the <emersons.tech> domain name in bad faith as the disputed domain name does not resolve to an active webpage. Inactive holding of a disputed domain name can show bad faith registration and use per Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). The Panel recalls Complainant provides a screenshot of the resolving webpage of the disputed domain name which displays a blank webpage. See Amend. Compl. Ex. C. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii). 

 

Complainant argues Respondent registered and uses the <emersons.tech> domain name in bad faith as Respondent registered the disputed domain name with actual knowledge of Complainant’s trademark rights. Actual knowledge of a complainant’s mark at the time of registration of a disputed domain name can show bad faith registration and can be established by a respondent’s attempts to pass off as a complainant. 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.”). Complainant argues that Respondent’s attempts to pass off as employees of Complainant shows actual knowledge of Complainant’s rights in the mark and indicates bad faith. See Amend. Compl. Ex. G. The Panel therefore finds Respondent had actual knowledge of Complainant’s rights in the EMERSON mark and registered the disputed domain name in bad faith per 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 <emersons.tech> domain name be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  May 26, 2020