WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Corning Incorporated v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2021-4225

1. The Parties

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

The Respondent is Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <nscorning.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2021. On December 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 17, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 28, 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 amended Complaint on January 10, 2022.

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 the Respondent of the Complaint, and the proceedings commenced on January 12, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 1, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2022.

The Center appointed Olga Zalomiy as the sole panelist in this matter on February 14, 2022. 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 multinational technology company that specializes in specialty glass, ceramics, and related materials and technologies. The Complainant owns several trademark registrations for the CORNING trademark, such as:

- U.S. trademark registration No. 0618649 for the word mark CORNING registered on January 3, 1956;

- Canadian trademark registration No. 195587 for the word mark CORNING registered on November 23, 1973.

The Respondent registered the Domain Name on November 10, 2021. The Complainant claims that the Domain Name was resolving to a consumer survey website, which promised Internet users a free phone if they were filing out the survey. Ultimately, the website redirected Internet users to a third party website where users were required to enter their credit card information in order to claim their “valuable prize”.

The Domain Name is also publicly offered for sale for USD 899.

It appears that the Respondent has been a respondent in two hundred sixty-three UDRP disputes involving over 400 domain names administered by the Center.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it is one of the world's leading innovators in materials science. The Complainant argues that the Domain Name is confusingly similar to its CORNING trademark because the Domain Name incorporates its famous CORNING trademark in its entirety. The Complainant alleges that it has rights in the CORNING trademark by virtue of its registration of over 325 CORNING trademarks worldwide. The Complainant states that inclusion of the letters “ns” into the Domain Name does nothing to diminish the confusion.

The Complainant alleges that there is no evidence to suggest that the Respondent has ever used, or demonstrated preparations to use, the Domain Name, or a name corresponding to the Domain Name, in connection with a bona fide offering of goods or services. The Complainant asserts that the Domain Name has been used to resolve to a consumer survey website, which is ultimately being used as an instrument of fraud. The Complainant submits that the Respondent’s use of the Domain Name in the furtherance of a fraudulent scheme constitutes prima facie evidence of Respondent’s lack of rights or legitimate interests in the Domain Name. The Complainant contends that there is no evidence 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 Complainant submits that the Domain Name was registered and is being used in bad faith. The Complainant claims that the Respondent’s offer to sell the Domain Name for USD 899 on the “www.sedo.com” website constitutes prima facie evidence of bad faith. The Complainant alleges that the Domain Name is being used in an attempt to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark. The Complainant submits that the Respondent’s website invites end users to take part in a consumer survey in exchange for a free phone in association with the well-known BEST BUY trademark and that at the conclusion of the survey, end users are invited to enter their credit card information to claim their free phone. The Complainant argues that the Respondent is using the Domain Name for fraudulent purposes, which supports a finding of bad faith. The Complainant submits that the Respondent has engaged in a pattern of trademark-abusive domain name registrations, because the Respondent registered over 400 domain names that contain third party marks to which she is not entitled.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:

(i) the 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 Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the UDRP, the Complainant must prove that the Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights.

The submitted evidence shows that the Complainant owns multiple trademark registrations for the CORNING trademark. Pursuant to section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), this satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.

The Domain Name consists of the Complainant’s CORNING trademark, the letters “ns” preceding the Complainant’s mark and the gTLD “.com”. “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”¹ It is well-established that the applicable generic Top-Level Domain (“gTLD”) should be disregarded under the confusingly similarity test as a standard registration requirement. ²

Because the Complainant’s CORNING trademark is recognizable within the Domain Name, the addition of the letters “ns” does not prevents a finding of confusing similarity. The gTLD “.com” is disregarded as a standard registration requirement. Therefore, the Domain Name is confusingly similar to the Complainant’s CORNING trademark.

The Complainant has satisfied the first element of the UDRP.

B. Rights or Legitimate Interests

To succeed under the second UDRP element, the Complainant must make out a prima facie case in respect of the lack of rights or legitimate interests of the Respondent.³

To demonstrate rights or legitimate interests in a domain name, non-exclusive respondent defenses under the UDRP, paragraph 4(c) include the following:

(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

While the Complainant contends that the Domain Name has been made to resolve to a consumer survey website, which is being used as an instrument of fraud, the Complainant provided little evidence in that regard apart from submitting a printout of a random website. However, the evidence on file shows that the Complainant has not licensed or permitted the Respondent to use the Complainant’s CORNING trademark in the Domain Name, or for any other purpose. There is no evidence that the Respondent has ever been commonly known by the Domain Name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name or that the Respondent is using the Domain Name in connection with a bona fide offering of goods or services.

The Panel finds that the Complainant has made out the prima facie case and the burden of producing evidence demonstrating it has rights or legitimate interests in the Domain Name has shifted to the Respondent. ⁴ Since the Respondent failed to present any rebutting evidence, the Complainant is deemed to have satisfied the second element of the UDRP.

C. Registered and Used in Bad Faith

Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.

The UDRP establishes that, for purposes of paragraph 4(a)(iii), “bad faith” registration and use of a domain name can be established by a showing of circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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. See UDRP, paragraph 4(b)(i).

Prior UDRP panels found that “the respondent’s intent in registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the complainant’s trademark, panels will find bad faith on the part of the respondent. While panel assessment remains fact-specific, generally speaking such circumstances, alone or together, include: (i) the respondent’s likely knowledge of the complainant’s rights… (iii) a pattern of abusive registrations by the respondent… (vii) failure of a respondent to present a credible evidence-backed rationale for registering the domain name, (viii)”⁵ . “A pattern of abuse has … been found where the respondent registers, simultaneously or otherwise, multiple trademark-abusive domain names corresponding to the distinct marks of individual brand owners.”⁶

First, given that the Domain Name was registered in 2021, decades after the Complainant obtained its trademark registrations for CORNING and many countries around the world, it is likely that the Respondent knew of the Complainant’s trademark rights. Second, the evidence shows that the Respondent is offering the Domain Name for sale for a price of USD 899. This sum is likely to exceed the Respondent’s out-of-pocket costs related to the Domain Name because the Domain Name has only been registered since November 10, 2021. Third, the Respondent has been a Respondent in two hundred sixty-three prior UDRP cases involving over 400 domain names that contain third party marks to which she is not entitled. Fourth, the Respondent failed to provide any evidence-backed rationale for registering the Domain Name. Therefore, it is likely that the Respondent registered and is using the Domain Name in bad faith.

Further, bad faith registration and use of a domain name can be established by a showing of circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct. See UDRP, paragraph 4(b)(ii). The Respondent has been found by previous UDRP panels to have engaged in a pattern of registering domain names to prevent the owners of marks from registering them⁷ . The Respondent’s similar course of conduct here with respect to the Complainant’s CORNING trademark justifies a finding of bad faith registration and use under the terms of paragraph 4(b)(ii).

The Complainant has satisfied the third element of the UDRP.

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 Domain Name <nscorning.com> be transferred to the Complainant.

Olga Zalomiy
Sole Panelist
Date: February 28, 2022

¹ Section 1.8, WIPO Overview 3.0.