The Complainant is Corning Incorporated, United States of America (“United States”), represented by Gowlings WLG (Canada) LLP, Canada.
The Respondent is Roger Williams, Austria. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2020. On May 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 26, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 29, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 3, 2020. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 26, 2020. The Center appointed Gareth Dickson as the sole panelist in this matter on July 1, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is a publicly traded company operating in the field of materials science, as it has been doing for more than 165 years. The Complainant is the owner of a number of trade mark registrations for or containing CORNING (the “Mark”) around the world, including: - United State trade mark registration number 1682729, registered on April 14, 1992; and - European Union Trade Mark registration number 16966822, registered on June 11, 2017. Various other trade mark registrations are provided by the Complainant and appear to be in the name of either a group company or a previous name of the Complainant but the connection is not clear from the Complaint and the above registrations suffice for the purposes of this decision. The disputed domain name was registered on April 30, 2020. It does not point to any active website but is being used by the Respondent to send emails asking recipients to replace any existing payment details they hold for the Complainant with those attached to the Respondent’s email. 5. Parties’ Contentions A. Complainant The Complainant alleges that the disputed domain name is a classic example of typo-squatting, and that the disputed domain name is confusingly similar to the Mark. It confirms that that domain name was registered by the Respondent without its permission and alleges that the Respondent has been using it as an instrument of fraud, writing to customers of the Complainant in the name of one of the Complainant’s employees and an identical (but for the misspelling of the disputed domain name) email address, to imitate the Complainant and try to persuade those customers to send future payments due to the Complainant to an alternative bank account which is unrelated in any way to the Complainant. The Complainant notes that in a 2019 UDRP decision (Corning Incorporated v. Name Redacted,WIPO Case No. D2019-2226) a registrant using the same registrar as the Respondent had been using the domain name The Complainant submits that there is no evidence to suggest that the Respondent: has been commonly known by the disputed domain name; is making, or intends to make, a legitimate noncommercial or fair use of it; or has ever used or demonstrated preparations to use it in connection with a bona fide offering of goods or services. The Complainant confirms that there has never been any relationship between the Complainant and the Respondent, who is not licensed or otherwise authorised by the Complainant to use the Mark in any manner whatsoever, including in or as part of a domain name. The Complainant also contends that typosquatting and impersonating the Complainant for fraudulent purposes cannot generate rights or legitimate interests in respect of the disputed domain name. The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that: (a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; (b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (c) the disputed domain name has been registered and is being used in bad faith. These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied. A. Identical or Confusingly Similar The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark. Section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that “[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”. The Panel therefore accepts that the disputed domain name is confusingly similar to the Mark since it is an intentional misspelling of the Mark, comprising the addition of the single letter “l” before the “g” in the Mark, which is a minor difference and does not alter the phonetic or conceptual similarity between the disputed domain name and the Mark. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not alter this conclusion. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. In the current proceeding, the Complainant has established its prima facie case. The evidence before the Panel is that the Mark is neither generic nor descriptive but enjoys a degree of distinctiveness, as evidenced by its numerous trade mark registrations and longevity of use, making a coincidental adoption by the Respondent highly unlikely. The Complainant states that it has not given the Respondent permission to use the Mark, in a domain name or otherwise, and submits that the Respondent has not been commonly known by the disputed domain name. That evidence has not been challenged by the Respondent. There is no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the Mark or has chosen to use the Mark in the disputed domain name in any descriptive manner or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it. Furthermore, the use of the disputed domain name to impersonate the Complainant to try to trick customers into sending money owed to the Complainant to a different bank account nominated by the Respondent cannot possibly constitute a bona fide sale of goods or services or a legitimate noncommercial or fair use within the meaning of the Policy. Section 2.13.1 of the WIPO Overview 3.0 states that: “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.” Such consideration applies here. By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element. As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The Panel notes that the disputed domain name was registered many years after the Mark was registered and accepts that the disputed domain name was chosen by reference to the Mark. It is a clear example of a typo-squatting domain name, that is, one which was chosen with a trade mark owner in mind, usually after the relevant trade mark has been registered, and for the purpose of misleading Internet users due to its similarity to that trade mark. This conclusion is inevitable from the fact that the disputed domain name has no meaning other than as a reference to the Mark, and from the earlier UDRP decision involving the Complainant in very similar circumstances. The Panel therefore finds that the Respondent’s registration of the disputed domain name was in bad faith. The disputed domain name is also being used in bad faith. Section 3.1.4 of the WIPO Overview 3.0 states: “[…] given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith.” The disputed domain name is being used fraudulently, to try to intercept payments due to the Complainant by impersonating it, and the Respondent has been found to have engaged in such conduct before. Furthermore, the existence of a previous UDRP decision against the Respondent does not create a presumption of bad faith per se, but it does tend to support such a finding of bad faith where the Respondent has not taken any steps to rebut it. Therefore, and on the basis of the information available to it, the Panel must, and does, find that the Respondent’s use of the disputed domain name is in bad faith. The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Gareth Dickson
Finally, the Complainant notes that in another recent UDRP proceeding against the Respondent, Cereal Docks S.p.A. v. Roger Williams,WIPO Case No. DEU2019-0009, the Respondent was also found to have been using a typo-squatting domain name to engage in fraudulent activities. Together, the Complainant argues that these facts demonstrate that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
Sole Panelist
Date: July 15, 2020
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