WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Corning Incorporated v. Lonnie S. Slocumb
Case No. D2021-4228
1. The Parties
The Complainant is Corning Incorporated, United States of America (“United States”), represented by Gowling WLG (Canada) LLP, Canada.
The Respondent is Lonnie S. Slocumb, United States.
2. The Domain Name and Registrar
The disputed domain name <corrning.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2021. On December 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 2022, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on January 4, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2022.
The Center appointed William R. Towns as the sole panelist in this matter on February 21, 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 publicly traded company headquartered in New York, and a leading innovator focusing for nearly 170 years in material sciences. The Complainant is the holder of numerous trademark registrations for its CORNING mark worldwide, including for example United States Trademark Registration No. 0618649, applied for and registered January 3, 1956; and Saudi Arabia Trademark Registration No. 1435018875, with a registration date of December 17, 2014. The Complainant has registered and uses the domain name <corning.com> in connection with its website at “www.corning.com”.
The disputed domain name <corring.com> was registered by the Respondent on registered July 22, 2021, according to the Registrar’s WhoIs records. The disputed domain name appears to have been advertised and offered for sale on the “www.hugedomains.com” website at an asking price of USD 2,895.1 The disputed domain name does not otherwise appear to be in active use by the Respondent.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain name <corrning.com> is virtually identical and confusingly similar to the Complainant’s registered CORNING trademark. The Complainant maintains that the disputed domain name as registered by the Respondent constitutes a clear case of typosquatting. The Complainant further adds that the Respondent’s typosquatting activities constitute prima facie evidence of confusion and signal intent by the Respondent to deceive the public.
The Complainant asserts that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent has neither used nor brought forth any evidence of demonstrable preparations to use in the disputed domain name in connection with a bona fide offering of goods or services. The Complainant emphasizes that use which intentionally trades on the notoriety of another can neither constitute nor establish rights or legitimate interests, and remarks it is well settled that engaging in typosquatting undermines any claim of rights or legitimate interests. The Complainant thus observes that the disputed domain name is void of any assertion of claims of rights or legitimate interests by the Respondent.
The Complainant concludes that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the Respondent clearly had the Complainant and the Complainant’s CORNING mark in mind when registering the disputed domain name, and contends that the Respondent has engaged in an extensive pattern of unauthorized registrations of at least 39 domain names, many of which reflect typosquatting.
The Complainant also observes that the Respondent’s passive holding of the disputed domain name in no way precludes a finding of bad faith. The Complainant submits that the Respondent has registered the disputed domain name intentionally and deliberately to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademarks as to source, sponsorship, affiliation, or endorsement.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s CORNING mark, in which the Complainant has established rights through registration and use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement. See Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
Applying this comparison, the Complainant’s CORNING mark is recognizable in the disputed domain name.2 The first element 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 disputed domain name.3 The Respondent’s inclusion of an additional letter “r” in the disputed domain name creates a deliberate misspelling of the Complainant’s CORNING mark, constitutes typosquatting, and does not in any way prevent a finding of confusing similarity of the disputed domain name to the
Complainant’s CORNING mark.4 When as here the relevant trademark is recognizable in the disputed domain name, the disputed domain name will be considered confusingly similar to that mark for purposes of UDRP standing.5 See, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524. Top-Level Domains (“TLDs”) such as “.com” generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy.6
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s CORNING mark.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it 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.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
The record clearly is convincing that the Respondent was aware of the Complainant and had the Complainant’s CORNING mark firmly in mind when registering the disputed domain name, and that the Respondent has engaged in typosquatting. In the absence of any explanation by the Respondent, the Panel considers that the Respondent registered the disputed domain name with the aim of exploiting and profiting from the Complainant’s CORNING mark. Further, the disputed domain name does not resolve to any active website, and appears to be advertised for sale on the “www.hugedomains.com” website at an asking price of USD 2,895.
Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel concludes that the Respondent has neither used nor demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and further finds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Further, there is no indication in the record that the Respondent ever has been commonly known by the
disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports any finding of the Respondent’s rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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; or
(ii) circumstances indicating that the respondent 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; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of the Policy. It is clear beyond cavil that the Respondent had the Complainant’s CORNING mark firmly in mind when registering the disputed domain name. The Respondent has engaged in typosquatting. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos) to a widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.7 The Panel finds that the Respondent’s registration and use of the disputed domain name seeks to exploit and profit from the Complainant’s trademark rights. Under the circumstances of this case, the Panel also finds that the non-use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding.8
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 name <corrning.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: March 4, 2022
1 The Panel notes its general powers articulated inter alia in paragraphs 10 and 12 of the Rules and has undertaken limited factual research into matters of public record. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.8.
2 See WIPO Overview 3.0, section 1.7. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.
3 Id.
4 See WIPO Overview 3.0, section 1.9 and cases cited therein. A domain name, which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark. See also WIPO Overview 3.0, section 1.8 and cases cited therein. The addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under paragraph 4(a)(i) of the Policy.
5 See WIPO Overview 3.0, section 1.7 and cases cited therein. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.
6 See WIPO Overview 3.0, section 1.11.1 and cases cited therein.
7 See WIPO Overview 3.0, section 3.1.4.
8 See WIPO Overview 3.0, section 3.3.