WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Corning Incorporated v. Mikhael Mikhael

Case No. D2021-0379

1. The Parties

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

The Respondent is Mikhael Mikhael, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <corningindonesia.com> is registered with Tucows 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 February 8, 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 February 16, 2021, and a reminder on February 24, 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 February 24, 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 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2021.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on April 9, 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, Corning Incorporated, a publicly traded company, is one of the world's leading innovators in materials science, with a more than 165-year track record of life-changing inventions. The Complainant applies its expertise in glass science, ceramic science, and optical physics along with its deep manufacturing and engineering capabilities to develop category-defining products that transform industries and enhance people's lives. The Complainant has enjoyed tremendous success. In 2018 alone, the Complainant generated USD 11.29 billion in revenue, and over USD 30 billion between 2016 and 2018.

The Complainant operates a website at “www.corning.com”.

The Complainant has proven to be the owner of hundreds of registrations worldwide for trademarks comprised of, or containing, the CORNING mark.

The Complainant is inter alia the owner of:

United States Registration CORNING (word) No. 545,056 registered on July 17, 1951;
United States Registration CORNING (word) No. 1,682,729 registered on April 14, 1992;
Australia Registration CORNING (word) No. B130,805 registered on March 14, 1960;
China Registration CORNING (word) No. 4820610 - Valid from June 7, 2008 to June 6, 2018;
Saudi Arabia Registration CORNING (word) No. 1435018875 registered on December 17, 2014;
Indonesia Registration CORNING No. IDM000230622 registered on December 21, 2009;
Canada Registration CORNING (word) No. TMA195,587 registered on November 23, 1973.

The disputed domain name was registered on November 6, 2020. At the time the complaint was filed, it resolved to a website that was under construction. At the time of this decision, the content of the website changed and it is now resolving to a website stating in Indonesian “network is growing are you ready? We provide optical connectivity solutions for every network segment including in-building network data center operators and OEMs”.

The Complainant’s trademark registrations predate the registration of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the CORNING trademark, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to obtain the transfer of the disputed domain name, paragraphs 4(a)(i)-(iii) of the Policy require that the Complainant must demonstrate to the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the 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

The Complainant has established rights in the CORNING trademark.

The disputed domain name consists of the CORNING trademark combined with the geographical term “indonesia”. This Panel agrees with the Complainant’s assertion that the addition of the geographical term “indonesia” in the disputed domain name is irrelevant in assessing the confusing similarity between the Complainant’s trademark and the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. In addition, the Respondent does not appear to be commonly known by the name “Corning Indonesia” or by a similar name. Moreover, the Respondent has not replied to the Complainant’s contentions, alleging any rights or legitimate interests in the disputed domain name.

In addition, the Panel finds that the nature of the disputed domain name, consisting of the CORNING trademark with the added geographical term “indonesia”, carries a risk of implied affiliation with the Complainant’s CORNING trademark.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain name was registered in bad faith and has been used in bad faith.

Particularly relevant are the Complainant’s unchallenged assertions (which the Panel accepts and partially reproduces below) that:

The Respondent could not be unaware of the existence of the Complainant’s trademarks when registering the disputed domain name;

The term “CORNING” is imaginative. It is therefore unlikely that the Respondent chose the disputed domain name without the intention of invoking a misleading association with the Complainant.

The Panel finds that the Respondent was more likely than not aware of the renowned CORNING trademark and of the existence of the Complainant and its activity.

Consequently, the Panel finds that the Respondent knew of the Complainant’s marks and intentionally intended to create an association with the Complainant and its business at the time of the registration of the disputed domain name.

At the time the Complaint was filed, the disputed domain name resolved to a website that was under construction. Previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

In addition, the Panel finds that the changes the Respondent made to its website following the filing of the Complaint is further evidence of bad faith. See Philip Morris Products S.A. v. Whois Agent, Doman Protection Services, Inc. / P. Poon, Enc Electronics, WIPO Case No. D2018-0823; Philip Morris Products S.A. V. Tony Mak, WIPO Case No. D2017-1623; and J. Choo Limited V. panluzhong, WIPO Case No. D2016-0252.

In addition, the contact email displayed on the Respondent’s website “@example.com” appears to be incorrect. In fact it transpires that messages sent to this address by the Center were not delivered for this reason.

Finally, the Respondent has not responded to (nor denied) the assertions made by the Complainant in this proceeding.

Accordingly, the Panel finds that the Complainant has satisfied 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 <corningindonesia.com> be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist
Date: April 20, 2021