Complainant is Corning Incorporated, United States of America (“United States” or “U.S”), represented by Gowling WLG (Canada) LLP, Canada.
Respondent is Domains By Proxy, LLC, United States / D d, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2021. On August 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 28, 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 Complainant on September 7, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on September 16, 2021.
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 Respondent of the Complaint, and the proceedings commenced on September 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 13, 2021.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on October 27, 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 BackgroundComplainant states that it is a publicly traded company (NYSE: GLW); that it is “one of the world’s leading innovators in materials science, with a more than 165-year track record of life-changing inventions”; that it “applies its unparalleled expertise in glass science, ceramic science, and optical physics along with its deep manufacturing and engineering capabilities to develop category-defining products that transform industries and enhance people’s lives”; that “[i]n 2018 alone, the Complainant generated $11.29 billion in revenue, and over $30 billion between 2016 and 2018”; and that it “operates a website at corning.com.”
Complainant further states that it is the owner of more 325 trademark registrations worldwide for trademarks comprised of, or containing, CORNING (the “CORNING Trademark”), the oldest of which appears to be U.S. Reg. No. 618,649 for CORNING, registered on January 3, 1956.
The Disputed Domain Name was created on April 6, 2021, and is not being used in connection with an active website.
5. Parties’ Contentions A. ComplainantComplainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the CORNING Trademark because it “incorporates the whole of the famous CORNING trademark” and “the word ‘mgmt’ does nothing to diminish confusion” and “quite the contrary – confusion is enhanced by the addition of the term ‘mgmt’” because “[c]onsumers are likely to be confused into believing that the Domain Name resolves to a website featuring the Complainant’s management team as the term ‘mgmt’ is an acronym for management.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “an unauthorized party cannot claim a legitimate interest in a domain name that contains, or is confusing with, a complainant’s mark, as the activities of such a party cannot be said to constitute a bona fide offering of goods or services”; “[u]se which intentionally trades on the notoriety of another cannot constitute a bona fide offering of goods or services, and to conclude otherwise would mean that a respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the Policy”; “[t]here is no evidence to suggest that the Respondent has ever used, or demonstrated preparations to use, the Domain Name, or a name corresponding to same, in connection with a bona fide offering of goods or services”; and “[t]here is no evidence to suggest that the Respondent has been commonly known by the Domain Name, or that the Respondent is making, or intends to make, a legitimate non-commercial or fair use of the Domain Name.”
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “[i]t is a well-established principle that it is not necessary for a disputed domain name to be associated with an active website for a finding of bad faith to be made under paragraph 4(b)(iv)” and “UDRP Panels have held that this bad faith requirement is met by a domain name that, if ever put to use, would ultimately result in consumer confusion”; and “the Domain Name suggests that it resolves to a website featuring the Complainant’s management or leadership team” and “[a]ccordingly, the Domain Name, if ever put to use, would likely confuse potential consumers into believing that the Respondent is somehow affiliated with, or endorsed by, the Complainant.”
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsPursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a).
A. Identical or Confusingly SimilarBased upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the CORNING Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the CORNING Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “corningmgmt”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
The Disputed Domain Name contains the CORNING Trademark in its entirety. As set forth in section 1.7 of WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
B. Rights or Legitimate InterestsComplainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “an unauthorized party cannot claim a legitimate interest in a domain name that contains, or is confusing with, a complainant’s mark, as the activities of such a party cannot be said to constitute a bona fide offering of goods or services”; “[u]se which intentionally trades on the notoriety of another cannot constitute a bona fide offering of goods or services, and to conclude otherwise would mean that a respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the Policy”; “[t]here is no evidence to suggest that the Respondent has ever used, or demonstrated preparations to use, the Domain Name, or a name corresponding to same, in connection with a bona fide offering of goods or services”; and “[t]here is no evidence to suggest that the Respondent has been commonly known by the Domain Name, or that the Respondent is making, or intends to make, a legitimate non-commercial or fair use of the Domain Name”.
WIPO Overview 3.0, section 2.1, states: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out 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.”
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad FaithWhether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or 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 registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or 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 registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
As set forth above, the Disputed Domain Name is not associated with an active web page. As set forth in section 3.3 of WIPO Overview 3.0:
From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
Citing Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Here, it is apparent that the CORNING Trademark is highly distinctive, Respondent has not submitted a response, Respondent used a privacy service to conceal its identity, and it is implausible that the Disputed Domain Name could be put to any good faith use.
Accordingly, the Panel finds that Complainant has proven the third element 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
Douglas M. Isenberg
Sole Panelist
Date: November 7, 2021