Eastman Chemical Company v. Eugene Lawrence
Claim Number: FA2005001896540
Complainant is Eastman Chemical Company (“Complainant”), represented by Margaret Esquenet of Finnegan, Henderson, Farabow, Garret & Dunner, L.L.P., District of Columbia, USA. Respondent is Eugene Lawrence (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eastman-us.co> (the “disputed domain name”), registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 15, 2020; the Forum received payment on May 15, 2020.
On May 19, 2020, the Registrar confirmed by e-mail to the Forum that the <eastman-us.co> disputed domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the domain name. The Registrar 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 May 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 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@eastman-us.co. Also on May 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 June 11, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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
Founded in 1920, Complainant is a chemical, fibers, and plastics manufacturing and sales company with its major markets in transportation, building and construction, consumables, tobacco, industrials and chemicals processing, food, feed and agriculture, and health and wellness.
Complainant’s rights in the EASTMAN trademarks are based on the common law trademark rights acquired through the substantial and continuous use of the trademarks by Complainant and its predecessors since at least as early as 1884. In addition, Complainant has rights in the EASTMAN trademark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg EASTMAN. No. 574,245, registered on May 12, 1953, among many others) (the “EASTMAN Mark”).
The Domain Name incorporates and is confusingly similar to Complainant’s federally registered and common law trademarks. Respondent has no rights or legitimate interests in the disputed domain name because it trades on the goodwill of Complainant’s trademarks, Respondent is not commonly known by the disputed domain name, and Respondent is not, and has never been, licensed and/or authorized by Complainant to use its trademarks. Respondent’s registration and use of the disputed domain name constitutes bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has rights in the EASTMAN Mark as described above. The Panel also finds that the disputed domain name is confusingly similar to the Complainant’s EASTMAN Mark, Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith.
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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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 Panel concludes that Complainant has rights in the EASTMAN Mark based on the registration of the trademark with the USPTO (e.g., U.S. Reg. No. 5,206,835, registered May 23, 2017), as well as Complainant’s prior continuous use of its common law trademark. Registration of a mark with the USPTO confers upon a complainant trademark rights for purposes of the Policy ¶4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”)
Respondent’s disputed domain name <eastman-us.co> is confusingly similar to the EASTMAN Mark under Policy ¶ 4(a)(i). The disputed domain name incorporates the EASTMAN Mark in its entirety connected by a hyphen to the abbreviation “us“, presumably for “United States”, and then followed by the country code Top Level Domain “ccTLD” “.co”.
The addition of a hyphen in a disputed domain name does not prevent the disputed domain name from being deemed confusingly similar to a complainant’s trademark. Likewise, the addition of a ccTLD to an otherwise recognizable mark will not sufficiently distinguish the disputed domain name from the EASTMAN Mark under Policy ¶ 4(a)(i). See MIGROS-GENOSSENSCHAFTS-BUND v. Tayfun yalcin, FA 1621184 (Forum July 8, 2015) (“In light of the fact that Respondent’s disputed domain name incorporates Complainant’s whole mark and merely adds the ccTLD “.us.,”
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
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”). Here, the Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name as Respondent has not provided evidence nor proven that it is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the EASTMAN Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. Further, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to impersonate Complainant in a fraudulent phishing scheme aimed at defrauding Complainant, its customers, suppliers, and/or investors. 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). 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 purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith because Respondent attracts users for commercial gain through fraudulent email solicitation. Use of a disputed domain name to capitalize on a complainant’s reputation for commercial gain is evidence of bad faith under Policy ¶ 4(b)(iv). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <eastman-us.co> disputed domain name be TRANSFERRED from Respondent to Complainant
Lynda M. Braun, Panelist
Dated: June 17, 2020
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