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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Corning Incorporated v. Domain Admin, HugeDomains.com

Case No. D2021-0549

1. The Parties

Complainant is Corning Incorporated, United States of America (“United States”), represented by Gowling WLG LLP, Canada.

Respondent is Domain Admin, HugeDomains.com, United States, self-represented.

2. The Domain Name and Registrar

The disputed domain name <corming.com> is registered with TurnCommerce, Inc. DBA NameBright.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2021. On February 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 25, 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 March 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2021. On March 22, 2021, Respondent requested for an extension of time to file a response. Accordingly, the Center granted Respondent an automatic four calendar day extension for response under paragraph 5(b) of the Rules. On March 26, 2021, Complainant requested the proceeding to be suspended. The Center suspended the proceeding until April 25, 2021, for purposes of settlement discussions concerning the disputed domain name. On April 23, 2021, Complainant requested the suspension period to be extended. The Center notified the Parties that the suspension period was further extended until May 25, 2021. However, on April 30, 2021, Complainant requested the proceeding to be reinstituted. On May 3, 2021, the Center reinstituted the proceeding and the new response due date was May 5, 2021. The Response was filed with the Center on May 5, 2021.

The Center appointed Georges Nahitchevansky, Tony Willoughby and The Hon Neil Brown Q.C. as panelists in this matter on June 18, 2021. The Panel finds that it was properly constituted. Each member of 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

Complainant, Corning Incorporated, is a publicly traded company in the field of materials science. Complainant manufactures and engineers a number of products that are based on its expertise in glass science, ceramics science, and optical physics. Complainant’s primary markets include optical communications, mobile consumer electronics, display, automotive, and life sciences. Complainant owns over 300 trademark registrations around the world for the mark CORNING, including several in the United States, the earliest of which issued to registration in 1956 (see Registration Nos. 618649, 918421, 1682729, 1748228).

Respondent is a reseller of domain names based in the United States. Respondent registered the disputed domain name on April 6, 2018. Respondent has offered the disputed domain name for sale through its website at “www.hugedomains.com” for USD 5,195. Currently, the disputed domain name does not resolve to an active website or web page.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it is a well-known company in the field of materials science that has enjoyed tremendous success over its 165-year history. Complainant maintains that its CORNING mark is famous.

Complainant argues that the disputed domain name is confusingly similar to Complainant’s CORNING mark as it is merely a typographical version of the CORNING mark that replaces the letter “n” in the middle of CORNING with the letter “m.”

Complainant contends that Respondent does not have a legitimate interest in the disputed domain name as Respondent (i) cannot claim rights in a domain name that is confusingly similar to Complainant’s mark, (ii) is using the disputed domain name to intentionally trade on Complainant’s CORNING mark, (iii) is intentionally engaged in typosquatting, (iv) has made no use or preparations to use the disputed domain name for a bona fide offering of goods and services and has simply offered the disputed domain name for sale, and (v) is not commonly known by the disputed domain name.

Lastly, Complainant asserts that Respondent registered and used the disputed domain name in bad faith as Respondent (i) acquired the disputed domain name in order to sell or license it to Complainant and (ii) is actively promoting its sale for USD 5,195. Complainant also asserts that Respondent has acted in bad faith as Respondent has a pattern of registering typo domains, Complainant notes that Respondent was found to have acted in bad faith by a Panel in a 2018 UDRP involving twenty five typo domain names based on, inter alia, the FACEBOOK and INSTAGRAM marks. Complainant also contends that bad faith is established by the fact that if Respondent ever uses the disputed domain name such will create a likelihood of confusion and a diversion of web traffic to Respondent for Respondent’s benefit. Finally, Complainant argues that Respondent had actual or constructive knowledge of Complainant’s CORNING mark when Respondent registered the disputed domain name.

B. Respondent

Respondent rejects Complainant’s contentions.

Respondent argues that Complainant’s CORNING mark is not distinctive and that Complainant does not have worldwide, exclusive rights in the term “Corming” and does not own any trademark registrations that incorporate the term “Corming.” In that regard, Respondent maintains that it has not engaged in typosquatting, but has registered a domain name based on the common name and term “Corming.” Respondent also argues that Complainant does not have exclusive rights to “Corning,” as there are multiple unrelated third party users of “Corning” in connection with a variety of goods and services as well as a number of cities and streets in the United States by the name of “Corning.”

Respondent contends that Complainant has failed to prove a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name as Complainant cannot claim exclusive rights to the term “Corming,” when such is in use around the world and many people have the legal last name “Corming.” Respondent maintains that as a reputable reseller of domain names it has a legitimate interest in buying and selling domain name that consists of common and generic terms and phrases, and that such activity constitutes a bona fide offering of goods and services. Respondent also contends that it registered the disputed domain name on account of its value as a common, generic surname and not because of Complainant’s unrelated CORNING mark and business. Lastly, Respondent asserts that Complainant has failed to provide “a shred of evidence” that establishes that Respondent registered the disputed domain name in order to intentionally trade on “Complainant’s alleged notoriety.”

Respondent argues that Complainant has failed to establish that Respondent registered or used the disputed domain name in bad faith. Respondent notes that Complainant has not proven with any evidence that Respondent specifically targeted Complainant and its CORNING mark. Respondent maintains that (i) prior to this proceeding it has never contacted or had communications with Complainant regarding the disputed domain name, (ii) since the disputed domain name was registered in 2011 by an unrelated party, Complainant has never owned or used the CORMING name and mark in connection with its business, and (iii) Complainant has claimed typosquatting without regard to the fact that “Corming” is a common name and term used by many unrelated parties. Finally, Respondent rejects Complainant’s contention that it has a pattern of typosquatting based on a prior UDRP decision that found against Respondent. In that regard, Respondent notes that the decision resulted from a mistake it made by not scrubbing its portfolio of registered domain names to remove clear typos based on distinctive brands, and that since then it “has revamped its business to prevent such issues from occurring again.”

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(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.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Complainant has provided evidence that it owns trademark registrations for the CORNING mark in the United States and other jurisdictions around the world that issued before Respondent, who is based in the United States, registered the disputed domain name.

With Complainant’s rights in the CORNING mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the gTLD such as “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the arguably identical term in a disputed domain name is sufficient to meet the threshold.

In the instant proceeding, the Panel finds that for purposes of the first element the disputed domain name is confusingly similar to Complainant’s CORNING mark as the disputed domain name differs only slightly from the CORNING mark with the letter “m” instead of “n.”

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

Here, Complainant’s entire argument that Respondent lacks rights or legitimate interests in the disputed domain name is predicated on the argument that the disputed domain name consists of a typo version of the CORNING mark and that Respondent has intentionally traded upon the notoriety that Complainant enjoys in its CORNING mark. While on its face, one could theoretically conclude that “Corming” is a typo version of “Corning,” particularly as the letters “m” and “n” are next to one another on a keyboard, the evidence provided by Respondent shows that the term “Corming” is used as a surname by a number of unrelated parties. Consequently, the mere fact that the disputed domain name could arguably be a typo version of the CORNING mark does not in and of itself establish that Respondent lacks rights or a legitimate interest in the disputed domain name, particularly where, as here, (i) “Corming” has a meaning and uses that are unrelated to Complainant and (ii) Complainant has not established that it has any rights in and to the common name “Corming.”

Needless to say, it was incumbent on Complainant to establish with evidence that Respondent intentionally targeted Complainant and its CORNING mark, as Complainant contends. However, there is nothing in the record that shows that Respondent registered the disputed domain name to take advantage of Complainant’s claimed rights in CORNING, apart from Complainant’s unsubstantiated assertions which are entitled to no weight. See WIPO Overview 3.0 at sections 3.1 and 4.2. While Complainant claims that its CORNING mark is famous, Complainant provided little evidence in that regard apart from showing that Complainant is a large publicly traded company with revenue of over USD 11 billion. Respondent effectively countered the lack of such evidence by showing that “Corning” is a term that is not exclusive to Complainant and that there are a number of third parties that use the name “Corning” for a variety of goods and services as well as several towns and streets in the United States with the name “Corning”. Thus, while Complainant may enjoy strong rights in the CORNING mark in its zone of interest, the evidence suggests that Complainant’s rights in CORNING may be limited to that zone and that Complainant is not everything “Corning.”

Against this backdrop, Complainant maintains that Respondent’s registration of the disputed domain name was as a typo version of Complainant’s CORNING mark. No evidence, however, was provided by Complainant that would show that Respondent more likely than not registered the domain name not based on the surname “Corming,” or as a typo of any of the many coexisting “Corning” uses, but did so to specifically target Complainant and its trademark rights in CORNING. Indeed, there is no evidence that Respondent has done anything with the disputed domain name that concerned Complainant or its CORNING mark, or which suggested an arguable connection to such.

Rather, Complainant has essentially sought to prove its case by citing to principles established in prior UDRP cases that are factually distinguishable from the case at hand in order to cobble together an argument that Respondent is engaged in typosquatting and thus has no claim of rights or legitimate interests. But again, merely claiming or invoking typosquatting without more does not turn a sow’s ear into a silk purse. This is particularly so in this case, where there is much evidence before the Panel that “Corming” is an actual surname and term used by others. Complainant needed to show with actual evidence that Respondent was specifically seeking to take advantage of Complainant’s rights in the CORNING mark as opposed to registering and offering for sale a domain name based on an actual name in use by a number of parties.

The mere fact that Respondent is a domain name reseller or investor does not in and of itself create a lack of rights or legitimate interests. Nor does Respondent’s attempt to sell the disputed domain name by itself establish that Respondent sought to exploit the trademark value of Complainant’s CORNING mark. To be sure, investing and reselling domain names is a legitimate business when such is not being done to take advantage of the trademark value associated with a particular term. Here, Respondent merely registered a disputed domain name based on the surname and common term “Corming” and then offered it for sale. Again, there is no evidence, and none has been provided by Complainant, that would suggest that Respondent acted with an intent to take advantage of Complainant’s rights in its CORNING mark as opposed to legitimately registering and offering the disputed domain name based on the “Corming” name for sale.

Under such circumstances, the Panel finds that based on the evidence submitted Respondent has a legitimate right or interest in the disputed domain name and that Complainant has failed to successfully establish the second element of the Policy.

C. Registered and Used in Bad Faith

Although Complainant’s Complaint fails under the second element, and the Panel does not need to consider whether Respondent registered and used the disputed domain name in bad faith, the Panel notes that the evidence submitted by Complainant, as set forth above, does not support a finding that Respondent registered and used the disputed domain name in bad faith.

As already found, Respondent legitimately registered the disputed domain name based on its value as a common name in actual use by numerous third parties. Moreover, there is no evidence that Respondent specifically targeted Complainant or its CORNING mark. The mere fact that Respondent, a domain name reseller, has attempted to sell the disputed domain name through its website at “www.hugedomains.com” does not in and of itself prove that Respondent has acted in bad faith. If Respondent legitimately registered the disputed domain name based on the existing actual name “Corming” that Complainant has no rights in, as the Panel has concluded, and has then offered the disputed domain name for sale without reference to Complainant or its trademark value (which the evidence shows), there is little to no basis for Complainant to claim that Respondent has acted in bad faith.

The Panel also notes that the mere fact that Respondent was found to have acted in bad faith and engaged in typosquatting in a prior UDRP case does not ipso facto mean that Respondent’s registration of the disputed domain name based on the actual name “Corming” is an act of bad faith. This is particularly so in light of Respondent’s explanation of the circumstances involved in that prior matter. Again, the central piece missing in this matter is proof that would tend to show that it was more likely than not that Respondent targeted Complainant and its CORNING mark. Such evidence, however, is altogether missing here.

Consequently, Complainant’s complaint fails on the third element as well.

7. Decision

For the foregoing reasons, the Complaint is denied.

Georges Nahitchevansky
Presiding Panelist

Tony Willoughby
Panelist

The Hon Neil Brown Q.C.
Panelist
Date: July 2, 2021

1 By way of example, Complainant referred the Panel to the decision in MouseSavers, Inc. v. Tsung, WIPO Case No. D2004-1034 which involved the domain name <wwwmousesavers.com>. In that case the disputed domain name which was a clear typo domain name was used to redirect web traffic to a page with links and advertising for services competing with those of the complainant and there was extensive evidence of bad faith prior typosquatting by the respondent in a number of cases that issued in or about the same time frame at issue in the MouseSavers case. Additionally, while Complainant asserts that Respondent used the disputed domain name to redirect web traffic to a pay-per-click website, no evidence supporting such claim was submitted by Complainant and Respondent vehemently denied that it had ever used the disputed domain name in that manner.

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