ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Corning Incorporated v. Name Redacted Case No. D2024-4511 1. The Parties The Complainant is Corning Incorporated, United States of America (“United States”), represented by Gowling WLG (Canada) LLP, Canada. The Respondent is Name Redacted.1 2. The Domain Names and Registrar The disputed domain names
and are registered with Dynadot Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2024. On November 4, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 5, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Redacted For Privacy (DT), Super Privacy Service Ltd. c/o Dynadot) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 6, 2024, 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 on November 6, 2024. 1 The Respondent appears to have used the name of a third-party when registering the disputed domain names. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the Disputed Domain Name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST 12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.
page 2 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 of the Complaint, and the proceedings commenced on November 7, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2024. A third-party sent email communications to the Center on November 25 and 27, 2024. The Center appointed Dennis A. Foster as the sole panelist in this matter on December 5, 2024. 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 United States corporation that has developed and manufactured many products, often related to glass, for more than 165 years. The Complainant is a large and profitable business, and generated over USD 30 billion in revenue between 2016 and 2018. The Complainant conducts its operations under the CORNING trademark, which has been registered worldwide, including the United States Patent and Trademark Office (“USPTO”): e.g., registration No. 618649, registration date January 3, 1956, in United States Classes 26 and 33; and Canadian trademark registration no. TMA 186211, registered on October 20, 1972, in International Class 11. The Respondent owns the disputed domain names and which were registered on October 8, 2024. The websites linked to the disputed domain names contain pay-per-click (“PPC”) linkages to other websites owned by competitors of the Complainant. 5. Parties’ Contentions A. Complainant - The Complainant offers products that have been sold for many years under the CORNING trademark and, more recently, in connection with the Complainant’s website attached to its domain name . - The disputed domain names are confusingly similar to the CORNING mark because the mere addition of the terms “usa” and “worldwide” along with the “.com” generic Top-Level Domain (“gTLD”) fail to provide meaningful distinction. - The Respondent lacks rights or legitimate interests in the disputed domain names. There is no affiliation between the Complainant and the Respondent, and the Complainant has granted the Respondent no authorization to use the Complainant’s trademark for any purpose. The Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or with respect to a legitimate noncommercial or fair use. Also, no evidence exists to establish that the Respondent has ever been commonly known as either of the disputed domain names. - The disputed domain names were registered and are being used in bad faith by the Respondent. At least one of the disputed domain names was used fraudulently by impersonating one of the Complainant’s employees to send phony emails to some of the Complainant’s clients with requests for unwarranted payments. Moreover, both of the disputed domain names contain PPC linkage to the websites of rival companies of the Complainant for the Respondent’s illegitimate financial benefit.
page 3 B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In accordance with Policy paragraphs 4(a)(i) - (iii), the Panel may find for the Complainant and grant a transfer of the disputed domain names, and , should the Complainant establish that: - The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and - The Respondent has no rights or legitimate interests in respect of the disputed domain names; and - The disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and/or service mark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. Because the Complainant has provided the Panel with clear evidence of its registrations for the CORNING trademark with the USPTO and other trademark authorities world-wide, the Panel finds that the Complainant has shown the necessary rights in respect of that mark for the purposes of Policy paragraph 4(a)(i). WIPO Overview 3.0, section 1.2.1; and see Age International, Inc. dba Blanton Distilling Company v. Domain Administrator, See PrivacyGuardian.org / Allen Smith, WIPO Case No. D2022-0027 (“The Panel finds that Complainant has rights in the BLANTON and BLANTON’S marks under Policy paragraph 4(a)(i) through registration with the USPTO and other authorities around the world.”); and Bryn Mawr Communications, LLC v. Linkz Internet Services, WIPO Case No. D2016-0286 (“Panels have consistently held that a Complainant’s trademark registrations with the USPTO demonstrate rights in those marks.”). The Panel observes that the entirety of the well-known and distinctive CORNING trademark is reproduced within both disputed domain names. In each case, the terms, “usa” and “worldwide”, have been added to that mark along with the “.com” gTLD. These minor additions, in the view of the Panel, cannot avoid a finding that both disputed domain names are confusingly similar to the Complainant's trademark. See WIPO Overview 3.0, sections 1.7. and 1.8. See also Haleon UK IP Limited v. Name Redacted, WIPO Case No. D2024-2875 (finding to be confusingly similar to HALEON trademark); and Amgen, Inc. v. Contact Privacy Inc. / PETER Griffith, WIPO Case No. D2022-0117 (found that is confusingly similar to the AMGEN mark). As a result, the Panel finds that the first element of the Policy, paragraph 4(i), has been established. B. Rights or Legitimate Interests Although 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 difficult 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 (although the overall burden of proof always remains on the complainant). If the respondent fails to come forward with such
page 4 relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1; and see Stoxx AG v. 247 Holdings Group, WIPO Case No. D2012-1582 (“It is a consensus view under the UDRP that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the Respondent.”). The Complainant has proved to the Panel’s satisfaction that the Complainant has trademark rights in the CORNING mark and that the Complainant has neither affiliation with the Respondent nor granted authority to the Respondent to use that mark in any manner. Thus, having reviewed the record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. As the Respondent has not filed a Response, the Panel will consider whether a reasonable rebuttal can be sustained against the Complainant’s prima facie case based on the record in these proceedings. In doing so, the Panel will accept the truth of all reasonable evidence found in the case. WIPO Overview 3.0, section 2.1; and see SomaLogic Operating Co. v. Edwards James, WIPO Case No. D2022-2902 (“In making that assessment, the Panel shall accept as true all reasonable contentions presented in the Complaint.”). Paragraph 4(c)(i,ii and iii) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. In that regard, the Complainant asserts that one of the disputed domain names is being used by the Respondent to present a phony email address of an employee of the Complainant in order to obtain unwarranted payments from third parties. This claim in the Complaint is supported by the record, and the Panel finds that such action is not “a bona fide offering of goods or services” per Policy paragraph 4(c)(i). WIPO Overview 3.0 section 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity [e.g., … impersonation / passing off, or other types of fraud] can never confer rights or legitimate interests on a respondent.”). Moreover, the Complainant has shown that the disputed domain names are being used to provide PPC linkage to companies that compete with the Complainant, which again fails to align with “a bona fide offering of goods or services”, and also is not “a legitimate noncommercial or fair use” of the disputed domain names under paragraph 4(c)(iii) of the Policy. See SODEXO v. Domain Privacy, Domain Name Privacy Inc., WIPO Case No. D2024-0402 (“...the present use in connection with PPC links to competitors of the Complainant cannot be characterized as legitimate non-commercial use or bona fide use of the disputed domain name.”). Finally, the Panel detects no reason to believe that the Respondent has been “commonly known by” either of the disputed domain names in accordance with Policy paragraph 4(c)(ii). As a result, the Panel determines that the Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names. Consequently, the Panel finds that the Complainant has carried its burden of proof under Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances without limitation that, if found by the Panel to be present, would be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the Respondent has set up PPC links (at least some of which lead to webpages of the Complainant’s competitors) on the websites that are directly connected with the disputed domain names. The Panel concludes that such use of the disputed domains names is for financial gain through the likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the websites attached to the disputed domain names in bad faith per Policy paragraph 4(b)(iv). See Fontem Holdings 4, B.V. v. J- B-, Limestar Inc., WIPO Case No. D2016-0344 (“The Panel further finds that the Respondent’s use of the Domain Name to resolve to a parking page
page 5 containing sponsored links constitutes bad faith as the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website, in accordance with paragraph 4(b)(iv) of the Policy.”); and Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474 (“Respondent’s bad faith is further illustrated by the domain name's resolution to a PPC parking page with links to websites selling products competing with Complainant’s. It is now well-established that the use of a parking page in this manner is strong evidence of bad faith.”). Furthermore, there is clear evidence that the Respondent is using at least one of the disputed domain names to send emails, purportedly from one of the Complainant's employees, to try to collect undue fees from customers of the Complainant. The Panel finds that use to be in bad faith under the Policy. WIPO Overview 3.0, section 3.4; and see Airlink (Pty) Limited v. Contact Privacy Inc. Customer 12410521468 / Farhan, WIPO Case No. D2021-3591 (“It is well accepted that use of a domain name to perpetrate fraud constitutes bad faith.”). Accordingly, the Panel finds the third element of the Policy (paragraph 4(a)(iii)) has been established. 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 names, and , be transferred to the Complainant. /Dennis A. Foster/ Dennis A. Foster Sole Panelist Date: December 19, 2024
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