WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Corning Incorporated v. Domain Administrator, DVLPMNT MARKETING, INC.
Case No. D2021-0376
1. The Parties
The Complainant is Corning Incorporated, United States of America, represented by Gowling WLG (Canada) LLP, Canada.
The Respondent is Domain Administrator, DVLPMNT MARKETING, INC., Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <corningbenefits.com> is registered with DNC Holdings, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2021. On February 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 10, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 12, 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 amendment to the Complaint on March 15, 2021.
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 February 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 11, 2021.
The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on March 22, 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 Background
The Complainant, a publicly traded company, is one of the world’s leading innovators in materials science. For more than 165 years, the Complainant has combined its expertise in glass science, ceramic science, and optical physics with manufacturing and engineering capabilities to develop new products.
The Complainant operates an official website under the domain name <corning.com>.
The Complainant owns numerous trademarks consisting of or including CORNING. In particular, the Complaint owns the following trademark registration for CORNING:
- United States trademark registration number 618649, registered on January 3, 1956, in classes 9, 19, and 21;
- United States trademark registration number 1748228, registered on January 26, 1993, in class 9.
The disputed domain name <corningbenefits.com> was registered on June 8, 2006.
The disputed domain name resolves to a webpage offering sponsored click-through advertising links to third-party websites.
The Respondent had numerous UDRP complaints filed against it. UDRP panels have ordered the transfer of 38 domain names registered by the Respondent.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its CORNING trademark, because it incorporates the whole of such mark, and the addition of the descriptive term “benefits” does nothing to diminish confusion.
The Complainant further contends that directing the disputed domain name to a pay-per-click site does not constitute a bona fide use of the disputed domain name. There is no evidence, according to the Complainant, that the Respondent has ever used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant contends that it has established a prima facie case that the Respondent has no rights or legitimate interests to the disputed domain name.
The Complainant alleges that the Respondent registered and used the disputed domain name in bad faith on several grounds. The Complainant alleges first that the Respondent registered the disputed domain name to resell it for a profit. The Complainant also contends that the Respondent registered the disputed domain name for the purpose of disrupting the Complainant’s business. Furthermore, the Complaint asserts that the Respondent registered the disputed domain name to intentionally attempt to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement. Finally, the Complainant contends that the Respondent has engaged into a pattern of registering domain names that contains trademarks of third parties.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:
(i) the domain name registered by the respondent 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 registered by the respondent has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name reproduces the Complainant’s trademark CORNING in its entirety with no alteration, and combines this trademark with the term “benefits”.
As a rule, UDRP panels consider that the addition of a descriptive term does not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In the present case, the trademark CORNING is clearly recognizable in the disputed domain name. The mere addition of the term “benefits” does not change the overall impression produced by the disputed domain name and does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. (See for example DPDgroup International Services GmbH & Co. KG v. Whois Privacy Protection Foundation / Aurelius Mark, WIPO Case No. D2019-3141).
UDRP panels also accept that a generic Top-Level Domain (“gTLD”), such as “.com”, should be disregarded when assessing whether a domain name is identical or confusing similar to a trademark (see section 1.11 of the WIPO Overview 3.0).
The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Based on the information submitted by the Complainant, the Respondent does not appear to have rights or legitimate interests in respect of the disputed domain name, nor has the Complainant granted to the Respondent an authorization to use the disputed domain name. Moreover, there is no evidence indicating that the Respondent is commonly known by the disputed domain name.
The Respondent does not appear to have operated any bona fide or legitimate business under the disputed domain name and is not making a noncommercial or fair use of the disputed domain name. Instead, the Respondent used the disputed domain name in connection with a website containing pay-per-click links to third-party websites. These types of uses do not constitute bona fide offering of goods and services.
Finally, the Respondent did not file a response to the Complaint. The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith.
Given the distinctive nature of the trademark CORNING, the Panel considers that the Respondent could not ignore the existence of the Complainant and of its trademark at the time of the registration of the disputed domain name. As a consequence, the Panel finds it unlikely that the disputed domain name was chosen independently without reference to the Complainant’s trademark.
The Complainant has demonstrated that the Respondent has been involved in over thirty UDRP procedures, in which panels ordered the transfer of the concerned domain names. The Respondent may accordingly be said to have engaged into a pattern of registering domain names reproducing trademarks of third parties, in order to prevent the owners of the trademarks to reflect them in a corresponding domain name. Such behavior amounts to registration and use in bad faith according to paragraph 4(b)(ii) of the Policy.
Furthermore, the presence of sponsored links to third party websites on the page to which the disputed domain name resolves also supports a finding of use in bad faith. Indeed, the redirection to a webpage with sponsored links suggests an intention on the part of the Respondent to exploit and profit from the Complainant’s trademark, by attempting to generate financial gains by means of “click through” revenues. Such conduct constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy (see F. Hoffmann-La Roche AG v. James Lee, WIPO Case No. D2009-1199; Scania CV AB v. Michael Montrief, WIPO Case No. D2009-1149; Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, WIPO Case No. D2009-0776 and AllianceBernstein LP v. Texas International Property Associates, WIPO Case No. D2008-1230).
Since the above-mentioned circumstances suffice to establish registration and use of the disputed domain name in bad faith, the Panel needs not decide whether the Respondent registered the disputed domain name to resell it for profit (within the meaning of paragraph 4(b)(i) of the Policy). Likewise, the Panel finds it unnecessary to decide whether the Respondent has registered the disputed domain name for the purpose of disrupting the business of a competitor (within the meaning of paragraph 4(b)(iii) of the Policy), as alleged by the Complainant.
Therefore, the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <corningbenefits.com> be transferred to the Complainant.
Anne-Virginie La Spada
Date: April 7, 2021