Eastman Chemical Company v. Mong Wong / Plastic gobal co.ltd
Claim Number: FA2207002004923
Complainant is Eastman Chemical Company (“Complainant”), represented by Jonathan Uffelman of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, District of Columbia, USA. Respondent is Mong Wong / Plastic gobal co.ltd (“Respondent”), Alaska, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eastrnan.com>, registered with 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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 20, 2022; the Forum received payment on July 20, 2022.
On July 21, 2022, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <eastrnan.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 July 21, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 2022, 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@eastrnan.com. Also on July 21, 2022, 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 August 15, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant manufactures and sells chemicals, fibers, and plastics.
Complainant holds a registration for the service mark EASTMAN.COM, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 2,326,330, registered on March 7, 2000, and renewed most recently as of May 3, 2020.
Respondent registered the domain name <eastrnan.com> on or about December 22, 2021.
The domain name is confusingly similar to Complainant’s EASTMAN.COM mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to use its mark in a domain name.
Respondent is not using the domain name in connection with either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent uses the domain name to impersonate Complainant in e-mail messages as part of a fraudulent phishing scheme.
Respondent lacks both rights to and legitimate interests in the domain name.
Respondent provided false contact information when it registered the domain name.
Respondent knew of Complainant’s rights in the EASTMAN.COM mark when it registered the domain name.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 domain name should be cancelled or transferred:
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
By virtue of its registration of the EASTMAN.COM service mark with a national trademark authority, the USPTO, Complainant has rights in the mark sufficient to satisfy the requirement of Policy ¶ 4(a)(i) that it demonstrate standing to pursue its claim against Respondent in this proceeding. See, for example, Recreational Equipment, Inc. v. Liu Chan Yuan, FA 1954773 (Forum August 9, 2021):
Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy¶4(a)(i).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <eastrnan.com> domain name is confusingly similar to Complainant’s EASTMAN.COM mark. The domain name incorporates the mark in its entirety, with only a slight misspelling of the term “eastman,” created by substituting the two-letter combination “rn” for the letter “m,” plainly intended, because of its visual similarity, to function as a form of homoglyph, deceiving the eye of the casual observer. This alteration of the mark, made in forming the domain name, does not save it from the realm of confusing similarity under the standards of the Policy.
See, for example, Milwaukee Elec. Tool Corp. v. Deckerconstructions / Decker Dalgetty, Case No. FA1935361 (Forum April 12, 2021):
The … domain name consists of most of the MILWAUKEE Mark, although with a misspelling of MILWAUKEE, using the homoglyph ‘rn’ instead of the letter ‘m’,…. Adding a homoglyph … is generally insufficient to distinguish a disputed domain name from the trademark it incorporates, particularly when that change does not alter the meaning or overall impression of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the disputed <eastrnan.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the domain name <eastrnan.com>, and that Complainant has not licensed or otherwise authorized Respondent to use the EASTMAN.COM mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Mong Wang / Plastic gobal co.ltd.,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without objection from Respondent, that Respondent employs the <eastrnan.com> domain name to impersonate Complainant in e-mail messages as part of a fraudulent phishing scheme. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Eastman Chem. Co. v. Eugene Lawrence, Case No. FA1896540 (Forum June 17, 2020):
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).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are convinced by the evidence that Respondent’s use of the contested <eastrnan.com> domain name to impersonate Complainant in e-mail messages as part of a fraudulent phishing scheme, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, The Hackett Group, Inc. v. Brian Herns/The Hackett Group, FA 1597465 (Forum February 6, 2015) (finding, under Policy ¶ 4(b)(iii), that the use of email messages associated with a domain name to send fraudulent communications to Internet users evidenced disruption of a UDRP complainant’s business and thus a respondent’s bad faith registration and use of that domain name).
We are also convinced by the evidence that Respondent provided false contact information when it registered the <eastrnan.com> domain name. The record shows specifically that Respondent gave “Denver, Alaska” as its contact location, but that there is no city with the name Denver in the State of Alaska. This attempt at deception further demonstrates that Respondent registered the domain name in bad faith. See, for example, Farouk Systems, Inc. v. Jack King / SLB, FA1618704 (Forum June 19, 2015) (finding bad faith registration under Policy ¶ 4(a)(iii) where a respondent provided false contact information when registering a disputed domain name).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <eastrnan.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 16, 2022
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