DECISION

 

Emerson Electric Co. v. Ed Morrissey / Integrity

Claim Number: FA2402002084365

 

PARTIES

Complainant is Emerson Electric Co. ("Complainant"), represented by Joseph E. Walsh, Jr. of Harness, Dickey & Pierce, PLC, Missouri, USA. Respondent is Ed Morrissey / Integrity ("Respondent"), Missouri, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <emersontower.com>, registered with Squarespace Domains II LLC.

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge have no known conflict in serving as Panelist in this proceeding.

 

Ivett Paulovics as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 19, 2024; Forum received payment on February 19, 2024.

 

On February 20, 2024, Squarespace Domains II LLC confirmed by e-mail to Forum that the <emersontower.com> domain name is registered with Squarespace Domains II LLC and that Respondent is the current registrant of the name. Squarespace Domains II LLC has verified that Respondent is bound by the Squarespace Domains II 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 February 20, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 2024 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@emersontower.com. Also, on February 20, 2024, 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.

 

A timely Response was received and determined to be complete by Forum on March 8, 2024.

 

On March 11, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ivett Paulovics as Panelist.

 

On the same date, Complainant submitted its Additional Submission.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends that the disputed domain name is confusingly similar to its renown EMERSON trademark, registered since 1916, as the mere addition of the generic term "tower" and the top-level domain ("TLD") ".com" does not serve to distinguish the domain name from such mark.

 

Complainant also contends that Respondent lacks rights or legitimate interests in the disputed domain name, since Respondent is neither affiliated with, nor has been licensed or permitted to use Complainant's distinctive and prior EMERSON trademark or any domain name incorporating such mark. Additionally, Respondent is not commonly known by the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the disputed domain name resolves to Respondent's own website. In addition, Respondent has made no demonstrable preparations to make a bona fide use of the disputed domain name.

 

Finally, given the prior business relationship between the parties, Complainant contends that Respondent had constructive and/or actual knowledge of Complainant's well-known rights in its marks when it registered the disputed domain name. According to Complainant, Respondent has also engaged in opportunistic bad faith registration, since it registered the disputed domain name confusingly similar to Complainant's EMERSON trademark a few hours after Complainant's public announcement that it would relocate its headquarters to a new facility to be named "Emerson Tower". Finally, Respondent has also failed to develop a resolving independent webpage for a legitimate purpose, since the disputed domain name resolves to Respondent's own website.

 

B. Respondent

Respondent's Response does not contain its contentions, but provides several documents analyzed the Panel below.

 

FINDINGS

Complainant was established in 1890 in St. Louis, Missouri (USA) as Emerson Electric Manufacturing Co. by Civil War Union veteran John Wesley Emerson to manufacture electric motors using a patent owned by the Scottish-born brothers Charles and Alexander Meston. In 1892 Emerson became the first to sell electric fans in the United States. Emerson quickly expanded its product line to include electric sewing machines, electric dental drills, and power tools.

 

Today, Complainant, listed at the New York Stock Exchange is a diversified, global manufacturing and technology company. It offers a wide range of products and services in the industrial, commercial and

consumer markets. Recognized widely for its engineering capabilities and management excellence, Complainant, as of September 30, 2023, employs 67,000 people and maintains 130 manufacturing locations worldwide.

 

Complainant is owner of several trademark registrations with the USPTO consisting in the term "EMERSON", including:

-       Reg. No. 0111931, registered since 1916, in Int. classes 7, 9, 11, 12, 15;

-       Reg. No. 1307968, registered since 1984, in Int. class 16;

-       Reg. No. 1331669, registered since 1985, in Int. class 7;

-       Reg. No. 2621862, registered since 2002, in Int. class 37;

-       Reg. No. 6192299, registered since 2020, in Int. class 6.

 

Complainant is also owner of the <emerson.com> domain name, registered since July 29, 1995, resolving to its main website. The website received on the average 1.385M visits during the period November 2023- January 2024, ranking Complainant's primary website 42,801st globally and 13,924th in the US.

 

On June 9, 2023, Complainant announced that it would relocate its headquarters in St. Louis to a new facility to be named "Emerson Tower". This announcement was made publicly beginning in the early morning hours on radio, in print, and on television. Afterwards, on the same day at 11:00 am, Complainant held a televised ribbon-cutting ceremony at its new facility that was covered by all major media outlets.

 

Respondent is a digital marketing company, headquartered in St. Louis, Missouri (USA).

 

The <emersontower.com> domain name was registered by Respondent on June 9, 2023. It resolves to Respondent's own website.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 10(d) of the Rules provides that the Panel shall determine the admissibility, relevance, materiality and weight of the evidence presented.

 

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.

 

Identical and/or Confusingly Similar

Complainant shows that it has rights in the EMERSON mark through trademark registrations with the USPTO, including Reg. No. 0111931, registered since 1916, Reg. No. 1307968, registered since 1984, Reg. No. 1331669, registered since 1985, Reg. No. 2621862, registered since 2002, and Reg. No. 6192299, registered since 2020. The registration of a mark with the USPTO is a valid showing of rights in a mark under Policy 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, "Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.").

 

The <emersontower.com> domain name incorporates in its entirety Complainant's EMERSON trademark with the addition of the generic term "tower", and concludes with the ".com" TLD. The differences between the disputed domain name and Complainant's EMERSON trademark are insufficient to distinguish the domain name from such mark for the purposes of the Policy. Therefore, the Panel finds, pursuant to Policy 4(a)(i), that Respondent's <emersontower.com> domain name is confusingly similar to Complainant's EMERSON trademark. See Chia Network Inc. v. Dan Mueller, FA 1961469 (Forum October 6, 2021) ("The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant's trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name."); see also Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002) ("It is a well-established principle that generic top-level domains are irrelevant when conducting a Policy 4(a)(i) analysis.").

 

Accordingly, the Panel finds Complainant has proven the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant's trademark.

 

Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the disputed domain name. If Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. 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.").

 

But, by virtue of paragraph 4(c) of the Policy, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on her evaluation of all evidence presented, shall demonstrate Respondent's rights or legitimate interests to the <emersontower.com> domain name:

 

(i)       before any notice to Respondent of the dispute, Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii)       Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii)       Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Thus, if Respondent proves any of these elements or indeed anything else that shows that it has a right or legitimate interest in the domain name, Complainant will have failed to discharge its onus and the Complaint will fail. If Respondent fails to come forward with such relevant evidence, Complainant is deemed to have satisfied the second element.

 

In this case, the Panel considers that Complainant has made out a sufficient prima facie case. The Complainant contends that the <emersontower.com> domain name is confusingly similar to Complainant's EMERSON trademark. Respondent, identified by the Registrar as Ed Morrissey / Integrity and located in St. Louis, Missouri (USA), has not been commonly known by the domain name. Respondent has not been authorized by Complainant to use its mark, whether in a domain name or otherwise. The <emersontower.com> domain name was registered on June 9, 2023, well-after the registrations of Complainant's EMERSON trademark and just a few hours after Complainant publicly announced that it would relocate its headquarters in St. Louis to a new facility to be named "Emerson Tower". Additionally, Complainant claims that Respondent had a prior business relationship with Complainant, namely Respondent had provided marketing consultancy services to Complainant. The <emersontower.com> domain name redirects to Respondent's website. These factors are sufficient to establish a prima facie case, and move the evidentiary onus under paragraph 4(a)(ii) of the Policy, to Respondent.

 

Respondent's Response contains its contacts details only, but does not include affirmative or negative affirmations to respond to the statements and allegations in the Complaint or any bases for Respondent to retain registration and use of the <emersontower.com> domain name. However, Respondent annexed several documents to the Response consisting of:

 

1.       the e-mail correspondence exchanged between Complainant and Respondent containing the discussions of a possible transfer of the disputed domain name to Complainant for a consideration (vide Exhibits 1-4);

2.       notes on the concept of a game named "Emerson Tower Puzzle Adventure" and related to the figure of Ralph Waldo Emerson, American essayist, lecturer, philosopher, abolitionist, and poet, who lived between May 25, 1803 and April 27, 1882 (vide Exhibit 5);

3.       a selection of screenshots of: i) four mobile applications made available by third parties containing the name "Emerson", ii) the homepage of a third-party company named "Emerson Financial" iii) the website of Booking.com related to an accommodation named "Emerson Towers" in Ocean City, Maryland (USA), and iv) a search on the website of the Library of Congress related to Emerson Tower, often referenced as the Bromo-Seltzer Tower, a 15-story clock tower erected in 1911, in Baltimore, Maryland (USA), named after Isaac Edward Emerson, an American businessman, creator of the headache remedy Bromo-Seltzer (vide Exhibit 6);

4.       Complainant's Q1 2024 Report (vide Exhibit 7);

5.       an extract of Complainant's website of its brands (vide Exhibit 8);

6.       a press release dated June 8, 2023, the day before Complainant's announcement to relocate its headquarters to a new facility to be named "Emerson Tower" and the registration of the <emersontower.com> domain name (vide Exhibit 9).

 

Respondent, thus, suggests two defenses in the attempt to support its rights or legitimate interests to the <emersontower.com> domain name:

 

1.       Respondent made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, i.e., a game named "Emerson Tower Puzzle Adventure" and related to the figure of Ralph Waldo Emerson (paragraph 4(c)(i) of the Policy);

2.       the family name and/or terms "Emerson" and/or "Emerson Tower" or "Emerson Towers" are commonly used, because multiple third-party mobile applications, websites and/or properties use such names and/or terms, and, thus, Respondent's use is to be considered fair use (paragraph 4(c)(iii) of the Policy).

 

After having taken into due consideration the evidence presented by both parties, the Panel finds that the <emersontower.com> domain name was selected by Respondent not for the purpose of good faith offering of goods and services or fair use, but instead for the purpose of targeting Complainant and the goodwill attached to Complainant's EMERSON trademark.

 

In making such finding the Panel considered the followings:

 

1.       The parties are located and operating in the same city and had prior business relationship. More precisely, Complainant asserts that Respondent "previously oversaw a major branding project for Emerson". Respondent does not contest the facts asserted by Complainant. It is, therefore, demonstrated that Respondent, had constructive and actual knowledge of Complainant, its business and its EMERSON trademark at the moment of the registration of the <emersontower.com> domain name.

2.       The <emersontower.com> domain name was registered just a few hours after the public announcement that Complainant would relocate its headquarters in St. Louis to a new facility to be named "Emerson Tower" and the ribbon-cutting ceremony at such new facility which received wide media coverage, as demonstrated by Complainant and not contested by Respondent.

3.       The notes on the concept of a game named "Emerson Tower Puzzle Adventure" and related to the American philosopher Ralph Waldo Emerson are both undated and pretextual. In view of the prior business relationship of the parties and the temporal proximity of Complainant's public announcement and the registration of the <emersontower.com> domain name (on the same day), Respondent's preparations to use the domain name in good faith for offering a game named "Emerson Tower Puzzle Adventure" and related to the figure of Ralph Waldo Emerson are not credible. No other evidence generally pointing to a lack of indicia of cybersquatting intent and demonstrating preparations to use the domain name for bona fide offering of goods and services has been provided by Respondent. Respondent's failure to make any demonstrable preparations to use the disputed domain name in good faith indicates a lack of rights or legitimate interests. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Forum April 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint).

4.       The disputed domain name incorporates in its entirety the Complainant's distinctive and reputed EMERSON trademark with the addition of the generic term "tower" plus the ".com" TLD. Although the existence of four third-party mobile applications published with names containing the name "Emerson" or a company named "Emerson Financial", the Panel finds Complainant's trademark so distinctive as to be overwhelmingly associated by consumers, at least in the USA, with Complainant as opposed to any other party. Furthermore, Respondent has not proved that the combination of the name "Emerson" and the terms "tower" or "towers" is so well-known and commonly used that Internet users will associate them with an accommodation advertised on Booking.com as "Emerson Towers" or the historical building often referenced as the Bromo-Seltzer Tower, both located in Maryland, instead of associating it with Complainant. Nor has Respondent demonstrated that he uses or intends to use the disputed domain name with reference to these properties/buildings.

 

Moreover, the Panel finds that the redirection of the <emersontower.com> domain name to Respondent's own website does not constitute a fair use, without intent for commercial gain to misleadingly divert Internet users or to tarnish the EMERSON trademark by Respondent, given Respondent's constructive and actual knowledge of Complainant, its business and its EMERSON trademark due to prior business relationship between the parties.

 

Accordingly, the Panel is satisfied that Complainant has met the second requirement of paragraph 4(a) of the Policy, and finds that Respondent lacks rights or legitimate interests to the <emersontower.com> domain name.

 

Registration and Use in Bad Faith

For the purposes of Paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

 

(i)       circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to Complainant who is the owner of the trademark or to a competitor of Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii)       Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or

(iii)       Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)        By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.

 

In the present case, Complainant has sufficiently demonstrated to have rights in the EMERSON trademark, registered since 1916. The EMERSON trademark is renown in the US and worldwide.

 

By the addition of the generic term "tower" to Complainant's EMERSON trademark, Respondent has registered a confusingly similar domain name to Complainant's well-known and prior EMERSON trademark. The TLD ".com" is to be ignored for the assessment of confusing similarity, since it is a technical requirement.

 

Additionally, given the prior business relationship between the parties (Respondent, located in the same city of Complainant, had provided marketing consultancy services to Complainant), it is inconceivable that Respondent could have registered the domain name confusingly similar to Complainant's EMERSON trademark for a mere chance without actual knowledge of the Complainant, its business and its rights in the renown EMERSON trademark and the intention to exploit such reputation by diverting traffic away from Complainant's website or to tarnish such mark or to prevent Complainant from owning the disputed domain name.

 

Rather, the choice of the additional generic term "tower" by Respondent is intentional and not a coincidence, considering that the registration took place just a few hours after Complainant's announcement, receiving wide media coverage, that it would relocate its headquarters in St. Louis to a new facility to be named "Emerson Tower". 

 

Therefore, the Panel finds that, with the registration of the <emersontower.com> domain name, Respondent has engaged in opportunistic bad faith and targeted Complainant and the goodwill attached to Complainant's EMERSON trademark. See Google LLC v. CHANGKYUM KIM, FA 2009455 (Forum October 5, 2022) ("[I]n view of the well-known character of Complainant's trademark, the Panel finds that Respondent acted in opportunistic bad faith at the time of registration, since the domain name is so obviously connected with Complainant that its selection by Respondent, who has no connection with Complainant, suggests that the domain name was registered with a deliberate intent to create an impression of an association with Complainant.").

 

The parties' correspondence on the negotiation of the possible transfer of the <emersontower.com> domain name to Complainant further confirms the Respondent's intention to register the domain name for the purpose of selling, renting, or otherwise transferring the domain name to Complainant or to a competitor of Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. See Lions Gate Entertainment Inc. v. Stephen Thomas / Cheetah, FA 2001775 (Forum August 5, 2022) ("Complainant contends that Respondent registered and uses the domain name in bad faith because Respondent has offered the domain for sale in excess of out-of-pocket costs. An offer of sale of a disputed domain name can be evidence of bad faith registration and use under Policy 4(b)(i).").

 

The <emersontower.com> domain name resolves to Respondent's website. The Respondent's preparations to use the disputed domain name to create a game named "Emerson Tower Puzzle Adventure" and related to the American philosopher Ralph Waldo Emerson has not been demonstrated by any credible evidence. Therefore, the Panel is persuaded that the afore-mentioned use of the disputed domain name cannot be considered good faith use.

 

Accordingly, the Panel finds that the <emersontower.com> domain name has been registered and is being used by Respondent in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

 

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 <emersontower.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ivett Paulovics, Panelist

Dated: March 25, 2024