The Complainant is Corning Incorporated, United States of America, represented by Gowling WLG (Canada) LLP, Canada.
The Respondent is 吴元锋 (Wu Yuan Feng), China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2021. On the following day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 30, 2021, 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 September 10, 2021, 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 amendment to the Complaint in English on September 16, 2021.
On September 10, 2021, the Center also transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On September 16, 2021, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the administrative proceeding.
The Center verified that the Complaint together with the amendment to the 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 in English and Chinese of the Complaint, and the proceedings commenced on October 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2021.
The Center appointed Matthew Kennedy as the sole panelist in this matter on November 1, 2021. 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 BackgroundThe Complainant is a technology company. It manufactures, among other products, optical fiber, cable and photonic components for the telecommunications industry. Photonics is the physical science of light (photon) generation, detection and manipulation, which has industrial applications in products such as barcode scanners, printers, and optical disc devices. The Complainant holds multiple trademark registrations for CORNING in multiple jurisdictions, including the following Chinese trademark registration numbers:
- 258700, registered on August 10, 1986, specifying goods in class 21;
- 576489, registered on December 20, 1991, specifying goods in class 9;
- 3205064, registered on October 14, 2003, specifying goods in class 11;
- 3205065, registered on March 14, 2004, specifying goods in class 7; and
- 4820610, registered on June 7, 2008, specifying goods in class 9.
The above trademark registrations remain current.
The Respondent is an individual resident in China.
The disputed domain name was registered on March 16, 2021. It formerly resolved to a website in English that published news items and company information about Xiamen Paint Co., Ltd., Xiangfan Wire Mesh Co., Ltd., Wuhan Food Machinery Distribution Department, Jincheng Textile Industry Distribution Department, Ulan Qab Feather Distribution Department, and Alar Glass Distribution Department. At the time of this Decision, the disputed domain name does not resolve to any active website; rather, it is passively held.
According to evidence provided by the Complainant, the disputed domain name is currently offered for sale on a domain name broker’s website and a domain tools website for USD 800.
5. Parties’ Contentions A. ComplainantThe disputed domain name is confusingly similar to the Complainant’s CORNING trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence to suggest that the Respondent has ever used, or demonstrated preparations to use, the disputed domain name, or a name corresponding to same, in connection with a bona fide offering of goods or services. There is no evidence to suggest that the Respondent has been commonly known by the disputed domain name, or that the Respondent is making, or intends to make, a legitimate non-commercial or fair use of the disputed domain name.
The disputed domain name was registered and is being used in bad faith. The Respondent acquired the disputed domain name for the purpose of selling, renting, licensing or otherwise transferring it to the Complainant for valuable consideration in excess of his actual costs in registering the disputed domain name. The disputed domain name is likely to confuse potential consumers into believing that the Respondent is somehow affiliated with, or endorsed by, the Complainant. Furthermore, the use of the disputed domain name would result in Internet traffic being diverted from the Complainant to the Respondent, thereby putting the Respondent in a position to reap a financial benefit.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1. Language of the ProceedingParagraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain name is in English (not Chinese), so the Respondent is unlikely to be prejudice by the selection of English as the language of the proceeding, whereas the selection of Chinese would create an undue burden on the Complainant and cause undue delay.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; and Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that in this proceeding the Complaint and amendment to the Complaint were filed in English. The website to which the disputed domain name resolved was entirely in English, from which it is reasonable to infer that the Respondent understands that language. Moreover, despite the Center having sent the notification of the Complaint, the written notice of the Complaint and an email regarding the language of the proceeding in both Chinese and English, the Respondent has not commented on the issue of language nor expressed any interest in otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint and amendment to the Complaint would create an undue burden and delay, whereas accepting them as filed without translation will not cause unfairness to either Party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed.
6.2 Substantive IssuesParagraph 4(a) of the Policy provides that a complainant must prove each of the following elements with respect to the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Based on the evidence presented, the Panel finds that the Complainant has rights in the CORNING mark.
The disputed domain name wholly incorporates the CORNING mark as its initial element. It also includes the word “photonics”. However, given that the mark remains clearly recognizable within the disputed domain name, the Panel does not consider that the addition of this word prevents a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that a respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The disputed domain name wholly incorporates the CORNING trademark and combines it with the word “photonics”. It is clear from the Complaint that the Complainant has not authorized the Respondent to use its CORNING mark in a domain name.
As regards the first and third circumstances above, the disputed domain name formerly resolved to a website that displayed information about an apparently random selection of Chinese companies. Nothing on the website had any apparent connection to Corning or to photonics. At the time of this Decision, it is passively held. Meanwhile, the disputed domain name is offered for sale at other Internet locations. Nothing in the evidence indicates that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services nor that he is making a legitimate noncommercial or fair use of the disputed domain name.
As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database as
“吴元锋 (Wu Yuan Feng)”, not the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The first circumstance is as follows:
(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name.
As regards registration, the disputed domain name was registered in 2021, decades after the Complainant obtained its trademark registrations for CORNING, including in China, where the Respondent is resident. The disputed domain name wholly incorporates the CORNING mark and combines it with the word “photonics”, which is descriptive of the technologies used in certain of the Complainant’s products, thereby indicating an awareness of the Complainant and those products. The Respondent provides no explanation for his choice of the disputed domain name. Based on this evidence, the Panel finds that the Respondent had the Complainant’s mark in mind when he registered the disputed domain name.
As regards use, the disputed domain name is offered for sale in at least two Internet locations for a price of USD 800. The website to which the disputed domain name formerly resolved displayed information about a seemingly random selection of Chinese companies with no apparent connection to Corning or photonics, and the disputed domain name no longer resolves to any active website. The Panel considers that all these circumstances indicate that the Respondent has registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, apparently for valuable consideration in excess of his documented out-of-pocket costs directly related to the disputed domain name, as envisaged in paragraph 4(b)(i) of the Policy.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
7. DecisionFor 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
Matthew Kennedy
Sole Panelist
Date: November 11, 2021