Emerson Electric Co. v. Adilcon Rocha
Claim Number: FA1706001735639
Complainant is Emerson Electric Co. (“Complainant”), represented by Christopher J. Hayes of Emerson Electric Co., Missouri, USA. Respondent is Adilcon Rocha (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emerson-france.com>, registered with REGISTER.IT SPA.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 13, 2017; the Forum received payment on June 13, 2017.
On June 15, 2017, REGISTER.IT SPA confirmed by e-mail to the Forum that the <emerson-france.com> domain name is registered with REGISTER.IT SPA and that Respondent is the current registrant of the name. REGISTER.IT SPA has verified that Respondent is bound by the REGISTER.IT SPA 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 June 15, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 2017 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@emerson-france.com. Also on June 15, 2017, 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 July 10, 2017 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
Complainant uses the EMERSON mark to manufacture electric motors all around the world. In 1892, Complainant became the first to sell electric fans, and it quickly expanded its product line to include electric sewing machines, electric dental drills, and power tools. Complainant registered the EMERSON mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 111,931, registered Aug. 15, 1916). See Compl., at Attached Ex. A. Respondent’s <emerson-france.com> domain name is confusingly similar as it simply appends a hyphen, the geographically descriptive term “france,” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <emerson-france.com> domain name. Respondent is not commonly known by the EMERSON mark, nor does Complainant sponsor Respondent. Respondent is not legitimately affiliated with Complainant in any way, nor has Complainant given Respondent permission to use the mark for any purpose. Respondent also does not use the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to pass itself off as Complainant as part of an email phishing scheme designed to misappropriate users’ bank accounts. See Compl., at Attached Ex. C & F (resolving webpage for the disputed domain name, and emails sent by Respondent, respectively).
Respondent registered and uses the <emerson-france.com> domain name in bad faith. Respondent has a prior history of misappropriating the trademarks of well-known brands and businesses, which evinces Respondent’s bad faith under Policy ¶ 4(b)(ii). See Compl., at Attached Ex. J. Further, Respondent registered the disputed domain name in attempts to create a likelihood of confusion and commercially benefit from an email phishing scheme. See Compl., at Attached Ex. F. Finally, Respondent must have had actual or constructive knowledge of Complainant’s EMERSON mark because of Complainant’s long-standing fame and notoriety around the world.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the manufacture of electric motors around the world.
2. Complainant registered the EMERSON mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 111,931, registered Aug. 15, 1916).
3 Respondent registered the <emerson-france.com> domain name on February 21, 2017.
3. Respondent uses the disputed domain name to pass itself off as Complainant as part of an email phishing scheme designed to misappropriate users’ bank accounts.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it registered the EMERSON mark with the USPTO (e.g., Reg. No. 111,931, registered Aug. 15, 1916), which gives Complainant rights in the mark. See Compl., at Attached Ex. A. Registration of a mark with the USPTO sufficiently establishes a registrant’s rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.). Therefore, the Panel finds that Complainant has established rights in the mark for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s EMERSON mark. Complainant argues that Respondent’s <emerson-france.com> domain name is confusingly similar as it simply appends a hyphen, the geographically descriptive term “france,” and the gTLD “.com.” Similar changes to marks have not sufficiently distinguished domain names from a complainant’s mark. See General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis); 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). Therefore, the Panel finds that Respondent has not included elements in the domain name that would provide distinction from Complainant’s mark under Policy ¶ 4(a)(i) and finds accordingly that the domain name is confusingly similar to the trademark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s EMERSON mark and to use it in its domain name adding the geographically descriptive term “france” which suggests that the domain name relates to the activities of Complainant in France;
(b) Respondent registered the domain name on February 21, 2017;
(c) Respondent uses the disputed domain name to pass itself off as Complainant as part of an email phishing scheme designed to misappropriate users’ bank accounts;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <emerson-france.com> domain name. Where a response is lacking, relevant information on the issue whether Respondent is commonly known by the domain name includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS record identifies “Adilcon Rocha” as the registrant of the domain name. See Compl., at Attached Ex. B. Complainant submits that no evidence exists to show that Respondent has ever been legitimately known by the EMERSON mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. 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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant next argues that Respondent does not use the disputed domain for any bona fide offering of goods or services or a legitimate noncommercial or fair use because it attempts to pass itself off as Complainant through emails. Passing off can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant submits that Respondent attempts to confuse customers by appearing to be an employee of Complainant in emails it sends to Complainant’s customers to phish for their bank account information. Evidence of phishing attempts can also evince a lack of any bona fide offering of goods or services or legitimate noncommercial or fair use. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel therefore finds that Respondent has failed to use the <emerson-france.com> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
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 does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered the disputed domain name in bad faith, evinced by Respondent’s propensity for misappropriating the trademarks of well-known brands and businesses. Cybersquatting can evince bad faith under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum November 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Complainant provides the WHOIS information for other domain names held by Respondent as evidence to support its argument of cybersquatting. See Compl., at Attached Ex. J. Accordingly, the Panel finds that Respondent registered the disputed domain name in bad faith by engaging in cybersquatting.
Secondly, Complainant argues that Respondent registered and uses the <emerson-france.com> domain name in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to benefit commercially by phishing for users’ bank account information. Commercially benefiting by creating a likelihood of confusion can evince bad faith registration and use. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). Phishing for information from a complainant’s customers can also lead to a finding of bad faith under Policy ¶ 4(a)(iii). See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”). Complainant provides emails allegedly sent on behalf of Respondent to Complainant’s customers as evidence of this apparent phishing scheme. See Compl., at Attached Ex. F. Accordingly, the Panel finds that Respondent attempted to benefit commercially off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv), and used the domain name to phish for bank account information in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant submits that Respondent had actual or constructive knowledge of Complainant’s EMERSON mark. However, panels do not accede to arguments of bad faith based solely on constructive notice as UDRP decisions have generally declined to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge does adequately evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of the EMERSON mark because of Complainant’s long-standing fame and notoriety around the world. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, helping to establish a finding of bad faith pursuant to Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the EMERSON mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <emerson-france.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 11, 2017
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