Eastman Chemical Company v. Amnon Jakony
Claim Number: FA1606001681860
Complainant is Eastman Chemical Company (“Complainant”), represented by Margaret Esquenet of Finnegan, Henderson, Farabow, Garret & Dunner, L.L.P., Washington, D.C., United States. Respondent is Amnon Jakony (“Respondent”), Uganda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eastmanindustries.net>, registered with Domain.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 29, 2016; the Forum received payment on June 29, 2016.
On June 29, 2016, Domain.com, LLC confirmed by e-mail to the Forum that the <eastmanindustries.net> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.com, LLC 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 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 2016 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@eastmanindustries.net. Also on June 29, 2016, 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.
An additional submission was timely received from Complainant on July 22, 2016.
On July 29, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant is an American Fortune 500 company, engaged in the global manufacture and sale of chemicals, fibers, and plastics. Complainant has registered the EASTMAN mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 556,354, registered Mar. 18, 1952), which demonstrates Complainant’s rights in its mark.
The <eastmanindustries.net> domain is confusingly similar to Complainant’s mark as it wholly incorporates the EASTMAN mark, and merely adds the generic term “industries” and the generic top-level domain (“gTLD”) “.net.”
Respondent has no rights or legitimate interests in the domain. Respondent is not commonly known by the disputed domain, and Complainant has not authorized Respondent to use the EASTMAN mark. Further, Respondent is not using the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain to send e-mails that impersonate Complainant in order to defraud Complainant and Complainant’s suppliers. Respondent also uses the domain name to solicit personal information from internet users. Respondent posed as a customer interested in buying products from Complainant. As part of its scheme Respondent lifted content from Complainant’s website and placed it on the <eastmanindustries.net> website to further confuse visitors into believing the website and domain name were related to or endorsed by Complainant. Respondent also fabricated some of the website’s content weaving in the actual names of Complainant’s executives.
Respondent registered and is using the domain in bad faith. First, Respondent’s use of the domain to phish for information from Complainant and Complainant’s suppliers disrupts Complainant’s business. Second, Respondent’s use of the domain to pass itself off as Complainant is evidence that Respondent has attempted to commercially benefit unfairly and opportunistically from the goodwill associated with Complainant’s mark. Third, Respondent registered the domain with knowledge of Complainant’s mark. Finally, Respondent’s use of the domain to phish for personal information from Complainant and Complainant’s suppliers constitutes bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
Complainant contends in its Additional Submission as follows:
The Forum received an e-mail from jayamnon@gmail.com, the “Registrant e-mail” on the WHOIS record, stating: “I am a domain registrar, not the person or person(s) running the website. I have made efforts to contact the site webmaster regarding service abuse. Otherwise contact them using the addresses on their website.”
Complainant asserts that even though Respondent may suggest that it is the registrar of the at-issue domain rather than the registrant, that suggestion is belied by the WHOIS record, which lists Domain.com LLC as the registrar for the Domain Name, and Amnon Jakony as the registrant. Complainant urges the Panel to hold Respondent responsible for the content of the website to which the disputed domain name resolves.
Complainant has rights in the EASTMAN mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademark.
Respondent uses the at-issue domain name to send e-mails that improperly impersonate Complainant in order to defraud Complainant and Complainant’s suppliers. Respondent also uses the domain name to solicit personal information from Internet users.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant establishes its rights in the EASTMAN mark by its registration of such mark with the United States Patent and Trademark Office. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Respondent’s domain name contains Complainant’s EASTMAN mark in its entirety suffixed with the descriptive term “industries” and all followed by the top-level domain name “.net.” The slight differences between the Complainant’s trademark and Respondent’s domain name are insufficient to distinguish one from the other under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <eastmanindustries.net> domain name is confusingly similar to Complainant’s EASTMAN trademark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also, Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).)
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for <eastmanindustries.net> lists “Amnon Jakony” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <eastmanindustries.net> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent uses the <eastmanindustries.net> domain name to send e-mails that improperly impersonate Complainant in order to defraud Complainant and Complainant’s suppliers. Respondent also uses the domain name to solicit personal information from internet users. This behavior indicates that Respondent is involved in a phishing scheme. Such use of the confusingly similar domain name is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 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).”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶ 4(b) specific bad faith circumstances as well as other circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above concerning Respondent’s rights and interests, Respondent uses the at-issue domain name to phish for information from Complainant and Complainant’s suppliers. Such activity disrupts Complainant’s business. Respondent’s use of a domain to phish for the private and/or personal information constitutes bad faith under Policy ¶ 4(b)(iii). See Textron Innovations Inc. v. DENNIS BROOKS, FA 1667443 (Forum May 4, 2016) (“The Panel find that phishing, in any form, is adequately disruptive, and finds that Respondent uses the <textron-incorporated.com> domain name in bad faith under Policy ¶ 4(b)(iii).”)
Furthermore, Respondent’s use of the <eastmanindustries.net> domain to pass itself off as Complainant shows that Respondent has attempted to commercially benefit—unfairly and opportunistically—from the goodwill associated with Complainant’s EASTMAN trademark. Therefore, the evidence demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Finally, Respondent registered the <eastmanindustries.net>domain name with actual knowledge of Complainant’s trademark rights in EASTMAN. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and because Respondent uses the domain name to pass itself off as Complainant as part of a phishing scheme. Therefore, it is clear that Respondent intentionally registered the at-issue domain name to improperly exploit EASTMAN’s trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark indicates that Respondent registered and used the at-issue domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <eastmanindustries.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 31, 2016
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