Complainant is Corning Incorporated, United States of America (“United States”), represented by Gowling WLG (Canada) LLP, Canada.
Respondent is Alan Willy, 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 27, 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 confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on September 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 22, 2021.
The Center appointed Phillip V. Marano as the sole panelist in this matter on November 2, 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 is a multinational technology company that specializes in glass, ceramics, optical physics, and related materials and technologies for industrial and scientific applications, headquartered in the United States. Complainant owns valid and subsisting registrations for the CORNING trademark in numerous jurisdictions, including the United States Trademark for CORNING, Registration No. 618,649, registered on January 3, 1956.
Respondent registered the disputed domain name on March 23, 2021. At the time of the Complaint was filed, the disputed domain name was not resolving to any active website content.
5. Parties’ Contentions A. ComplainantComplainant asserts ownership of the CORNING trademark and has adduced evidence of trademark registrations in numerous jurisdictions around the world including the United States. The disputed domain name is confusingly similar to Complainant’s CORNING trademark, according to Complainant, because it incorporates the whole of the CORNING trademark and the additional word “tech” only enhances confusion because Complainant is a multinational technology company.
Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: (i) the lack of evidence to suggest Respondent has ever used, or made preparations to use, the disputed domain name; (ii) the assertion that Respondent is seeking to mislead end users into believing that the disputed domain name resolves to Complainant’s official website; and (iii) there is no evidence to suggest Respondent is commonly known by the disputed domain name.
Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: Respondent’s extensive pattern of bad faith registrations, including twenty six domain names that typosquat on third party trademarks; Respondent’s intentional targeting of Complainant as evidenced by the combination of the CORNING trademark with the related term “tech” in the disputed domain name; and Respondent’s actual or constructive knowledge of Complainant’s rights based on Complainant’s trademark registrations.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsTo succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy:
1. The disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights;
2. Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. The disputed domain name has been registered and is being used in bad faith.
Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 further states: “A respondent’s default would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. […] UDRP panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g., where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”; see also The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064: “The Respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”.
A. Identical or Confusingly SimilarOwnership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0, section 1.2.1. Complainant submitted evidence that the CORNING trademark has been registered in multiple jurisdictions with priority dating back to 1956, nearly 65 years before the disputed domain name was registered by Respondent. Thus, the Panel finds that Complainant’s rights in the CORNING trademark have been established pursuant to the first element of the Policy.
The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s CORNING trademark. In this Complaint, the disputed domain name is confusingly similar to Complainant’s CORNING trademark because, disregarding the “.com” generic Top-Level Domain (“gTLD”), the trademark is contained in its entirety within the disputed domain name. WIPO Overview 3.0, section 1.7 states: “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 domain name. […] 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 [...].” In regards to gTLDs, such as “.com” in the disputed domain name, are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0, section 1.11.
The combination with the term “tech” does not prevent a finding of confusing similarity between Complainant’s CORNING trademark and the disputed domain name. WIPO Overview, section 1.8 states: “Additional terms (whether descriptive, geographic, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”; see also AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553: “Each of the domain names in dispute comprises a portion identical to [the ATT trademark] in which the Complainant has rights, together with a portion comprising a geographic qualifier, which is insufficient to prevent the composite domain name from being confusingly similar to Complainant’s [ATT trademark]”; OSRAM GmbH v. Cong Ty Co Phan Dau Tu Xay Dung Va Cong Nghe Viet Nam,WIPO Case No. D2017-1583: “[T]he addition of the letters ‘hbg’ to the trademark OSRAM does not prevent a finding of confusing similarity between the Disputed Domain Name and the said trademark”.
In view of Complainant’s registrations for the CORNING trademark, and Respondent’s incorporation of that trademark in its entirety in the disputed domain name, the Panel concludes that Complainant has established the first element of the Policy.
B. Rights or Legitimate InterestsComplainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent has not engaged in any ostensible use of the disputed domain name and fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview 3.0, section 2.1. Furthermore, it is evident that Respondent, identified by WhoIs for the disputed domain name as “Alan Willy”, is not commonly known by the disputed domain name or Complainant’s CORNING trademark.
In view of the absence of any supporting Respondent’s rights or legitimate interests in the disputed domain name, and Respondent’s apparent passive holding of the disputed domain name, the Panel concludes that Complainant has established the second element of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name:
1. Circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or
2. Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
3. Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
4. By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
“Where parties are both located in the United States and the complainant has obtained a federal trademark registration pre-dating a respondent’s domain name registration, panels have applied the concept of constructive notice. Application of this concept may depend in part on the complainant’s reputation and the strength or distinctiveness of its trademark, or circumstances that corroborate an awareness of the complainant’s trademark.” WIPO Overview 3.0, section 3.2.2. In this Panel’s view, when the disputed domain name was registered on March 23, 2021, Respondent had constructive knowledge of Complainant’s pre-existing rights in Complainant’s CORNING trademark under United States law. See e.g., Champion Broadcasting System, Inc. v. Nokta Internet Technologies,WIPO Case No. D2006-0128: “Applying the principle of constructive notice where both parties are located in the United States”. Indeed, circumstances in this case corroborate Respondent’s awareness of Complainant and Complainant’s CORNING trademark, including inclusion of the related term “tech” in the disputed domain name and Respondent’s established pattern of bad faith registration and use within paragraph 4(b)(ii) of the Policy.
Based on the reverse WhoIs evidence submitted by Complainant, this Complaint presents a typical example where Respondent has engaged in a pattern of bad faith registration and use within paragraph 4(b)(ii) of the Policy. WIPO Overview 3.0, section 3.1.2: “This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner.” Complainant has provided a list containing over twenty-six examples of domain names registered by Respondent that incorporate trademarks owned by third party technology companies and manufacturers of consumer goods. These examples create a presumption that Respondent has repeatedly targeted in bad faith third party trademarks like TEXAS INSTRUMENTS, ZIPPO, and other brands.
Finally, passively holding a domain name does not prevent a finding of bad faith. WIPO Overview 3.0, section 3.3 states: “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 any 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; and (iv) the implausibility of any good faith use which the domain name may be put.”See also Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003: “A remedy can be obtained under the Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith.”
In the absence of any arguments or evidence from Respondent, and in view of Respondent’s constructive notice of Complainant’s CORNING trademark registrations in the United States, Complainant’s reverse WhoIs evidence demonstrating that Respondent has targeted trademarks belonging to multiple third parties, Complainant’s passive holding of the disputed domain name which incorporates the longstanding CORNING trademark and the related term “tech”, and the implausibility of any good faith use which the disputed domain name may be put, the Panel concludes that Complainant has established 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,
Phillip V. Marano
Sole Panelist
Date: November 17, 2021