WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Corning Incorporated v. Domain Administrator, See PrivacyGuardian.org / Kobayashi Dongyuan
Case No. D2021-0801
1. The Parties
The Complainant is Corning Incorporated, United States of America (“US”), represented by Gowling WLG (Canada) LLP, Canada.
The Respondent is Domain Administrator, See PrivacyGuardian.org, US / Kobayashi Dongyuan, China.
2. The Domain Name and Registrar
The disputed domain name <corninq.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2021. On March 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 18, 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 19, 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 19, 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 March 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 16, 2021.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on April 23, 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 is a US-based publicly traded company that counts with over 165 years of expertise in glass science, ceramics science, and optical physics, along with deep manufacturing and engineering capabilities.
In addition to the domain name <corning.com>, the Complainant is the owner of the following trademark registrations, amongst hundreds of others (Exhibit 3 to the Complaint):
- US trademark registration No. 545056 for the word mark CORNING filed on March 19,1948, registered on July 17, 1951, and subsequently renewed; and
- US trademark registration No. 618649 for the word mark CORNING filed on March 15, 1955, registered on January 3, 1956, and subsequently renewed.
The disputed domain name <corninq.com> was registered on November 19, 2020, and presently resolves to a blank page solely depicting a link to a website developer’s homepage. In the past it has been used in connection with a pornographic website (Exhibit 5 to the Complaint).
5. Parties’ Contentions
The Complainant asserts to be the one of the world’s leading innovators in materials science, with a more than 165-year track record of life-changing innovations, counting with unparalleled expertise in glass science, ceramic science and optical physics, having had, in 2018 alone, USD 11.29 billion in revenues.
The Complainant further asserts that its CORNING trademark enjoys widespread recognition, having generated significant goodwill which led it to become famous.
In the Complainant’s view, the disputed domain name characterizes a clear case of typosquatting having the Respondent intentionally misspelled the famous CORNING trademark by substituting the letter “g” with the letter “q”, being the disputed domain name nearly identical to the Complainant’s registered trademark.
Moreover, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent registered the disputed domain name without the permission of the Complainant;
(ii) the Respondent has been using the disputed domain name, which contains the Complainant’s distinctive trademark, in connection with a pornographic website, what undermines any claim of legitimate interest;
(iii) there is no evidence to suggest that the Respondent has ever used, or demonstrated preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; and
(iv) there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name, or that the Respondent is making, or intends to make, a legitimate noncommercial or fair use of the disputed domain name.
As to the registration of the disputed domain name in bad faith the Complainant asserts that the Respondent had actual knowledge of the Complainant, or at the very least, constructive knowledge of the CORNING trademark by virtue of the Complainant’s trademark registrations. In light of the distinctive CORNING trademark, the Respondent specifically targeted the Complainant seeking to create a likelihood of confusion with the Complainant’s trademark as to source, sponsorship, affiliation or endorsement of the disputed domain name and furthermore benefiting from the traffic generated in view of the commercial nature of the pornographic website that resolved from the disputed domain name
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
The Complainant has established its rights in the registered CORNING trademark.
The Panel finds that the disputed domain name only differs by one letter to the Complainant’s trademark and is therefore confusingly similar to it. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. The Panel finds that the Complainant’s CORNING trademark is recognizable within the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7.
The first element of the Policy has therefore been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent’s rights to or legitimate interests in a disputed domain name. These circumstances are:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed 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 (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that the Respondent registered the disputed domain name without its permission.
Also, the lack of evidence as to whether the Respondent is commonly known by the disputed domain name, corroborates with the indication of the absence of a right or legitimate interest in the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
The second element of the Policy has therefore been established.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant who is the owner of a trademark relating to the disputed domain name or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other 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 the Respondent’s website or location.
The registration and use of the disputed domain name in bad faith can be found in the present case in view of the following circumstances:
(i) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name;
(ii) the well-known status of the Complainant’s trademark and the nature of the disputed domain name suggests rather a clear indication of the Respondent’s registration and holding of the disputed domain name in bad faith, with the implausibility of any good faith use to which the disputed domain name may be put;
(iii) the use of the disputed domain name in connection with a pornographic website;
(iv) the current use of the disputed domain name to a blank page solely depicting a link to a website developer’s homepage; and
(v) the use of a false address in the WhoIs data and, consequently, the Center not being able to have communications fully delivered to it.
For the reasons as those stated above, the Panel finds that the disputed domain name was registered and is being used in bad faith.
The third element of the Policy has therefore been established.
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, <corninq.com>, be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: April 29, 2021