WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Corning Incorporated v. Charlie Jang

Case No. D2021-4230

1. The Parties

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

The Respondent is Charlie Jang, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <coorning.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed in English 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, 2021, 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.

On December 17, 2021, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On December 20, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 in English and Japanese of the Complaint, and the proceedings commenced on December 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 15, 2022.

The Center appointed Keiji Kondo as the sole panelist in this matter on January 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 (NYSE: GLW). The Complainant is a leading innovator in materials science. In 2018 alone, the Complainant generated $11.29 billion in revenue, and over $30 billion between 2016 and 2018.

The Complainant is the owner of over 325 trademark registrations worldwide for trademarks comprised of, or containing, CORNING (collectively, the “CORNING trademarks”). One of the trademark registrations owned by the Complainant, Canadian trademark registration No. 268, Folio 57525, is deemed to have been registered since September 1, 1932, according to a certificate issued on May 29, 1939. The Canadian trademark registration covers glass and glassware of all kinds.

The Complainant’s domain name is <corning.com>.

The disputed domain name was registered on November 18, 2021. The disputed domain name resolves to an inactive website.

The Respondent has been using the disputed domain name as an instrument of fraud. Using the email address associated with the disputed domain name, the Respondent has been masquerading as the Complainant and issuing email correspondence to unsuspecting clients of the Complainant directing them to deposit funds in a bank account located in the United Kingdom. The Respondent’s email address is intended to impersonate the email address of a sales manager of the Complainant.

5. Parties’ Contentions

A. Complainant

The disputed domain name is nearly identical to the Complainant’s registered CORNING trademarks. Furthermore, the whole of the CORNING element of the CORNING trademarks is incorporated in the disputed domain name. The fact that the Respondent has added the letter “o” to the CORNING trademark does nothing to diminish confusion as the disputed domain name remains virtually identical to the CORNING trademarks. Indeed, the Respondent’s typosquatting activities constitute prima facie evidence of confusion.

It is a well-established principle that the addition of a generic Top-Level Domain (“gTLD”), such as “.com”, is without legal significance in determining the issue of similarity (Research In Motion Limited v. International Domain Names Inc./Moniker Privacy Services, WIPO Case No. D2008-0780).

Accordingly, it is respectfully submitted that the disputed domain name is confusingly similar to the CORNING trademarks.

There has never been any relationship between the Complainant and the Respondent. The Respondent is not licensed, or otherwise authorized, be it directly or indirectly, to register or use, the CORNING trademarks in any manner whatsoever, including in, or as part of, a domain name.

It is well settled that engaging in typosquatting activities undermines a claim of legitimate interests or rights (ESPN, Inc. v. XC2, supra; MouseSavers, Inc. v. Tsung, WIPO Case No. D2004-1034; Marriott Int’l, Inc. v. Seocho, NAF FA149187; Daniel Jesus Chavez Moran, Desarrollo Marina Vallarta, S.A. DE C.V. v. Registrant of grupovidantamembers.com, C/O Private Ranger Limited / Hector Rangel, WIPO Case No. D2014-1857). Impersonating a complainant by using a disputed domain name as part of an email address in the furtherance of a fraudulent scheme constitutes prima facie evidence of no rights (TVS Motor Company Limited v. Vistaprint Technologies Limited, WIPO Case No. DCO2014-0007; Roper Industries, Inc. v. VistaPrint Technologies Ltd., WIPO Case No. D2014-1828; Tetra Laval Holdings & Finance S.A. v. VistaPrint Technologies Ltd., WIPO Case No. D2014-1387; Vifor (International) Ltd. v. Glenn Freeman, WIPO Case No. D2014-2065).

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. The Respondent registered the disputed domain name as part of a fraudulent scheme to unlawfully extract money from unsuspecting third parties believing the Respondent to be the Complainant. Using the disputed domain name as part of an email address that is virtually identical to that of the Complainant creates the false impression that the email was sent by the Complainant, when in fact it was not. The Respondent’s activities may accurately be described as insidious, fraudulent and completely undermine any claim of rights. Furthermore, the mere act of typosquatting, by itself, also squarely undermines a claim of rights or legitimate interests.

The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.

Under the circumstances, the Respondent cannot claim the benefit of paragraph 4(c)(i).

Further, 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. Accordingly, the Respondent cannot claim the benefit of paragraphs 4(c)(ii) and (iii).

Given the fact that the Respondent is impersonating the Complainant, there can of course be no doubt that the Respondent had actual knowledge of the CORNING trademarks at the time of registration, thereby supporting a finding of bad faith. The Respondent also had constructive knowledge of the CORNING trademarks by virtue of the Complainant’s trademark registrations.

It is a well-established principle that using a disputed domain name as an email address to impersonate a complainant in the furtherance of a fraudulent scheme is evidence of bad faith (TVS Motor Company Limited v. Vistaprint Technologies Limited, supra; Roper Industries, Inc. v. VistaPrint Technologies Ltd., supra; Tetra Laval Holdings & Finance S.A. v. VistaPrint Technologies Ltd.,supra; Vifor (International) Ltd. v. Glenn Freeman, supra; Daniel Jesus Chavez Moran, Desarrollo Marina Vallarta, S.A. DE C.V. v. Registrant of grupovidantamembers.com, C/O Private Ranger Limited / Hector Rangel, supra). The Respondent’s use of the email address associated with the disputed domain name in the furtherance of a fraudulent scheme constitutes evidence of bad faith.

It is well-settled that the practice of typosquatting is by itself evidence of bad faith registration (ESPN, Inc. v. XC2, supra; Longs Drug Stores Cal., Inc. v. Shep Dog, WIPO Case No. D2004-1069; Lexar Media, Inc. v. Huang, WIPO Case No. D2004-1039; Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-0816). The Respondent has engaged in typosquatting, which is prima facie evidence of bad faith.

It is a well-established principle that it is not necessary for a disputed domain name to be associated with an active website for a finding of bad faith to be made under paragraph 4(b)(iv). UDRP panels have held that this bad faith requirement is met by a domain name that, if ever put to use, would ultimately result in consumer confusion (CBS Broadcasting, Inc. v. LA-Twilight-Zone, WIPO Case No. D2000-0397; SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; Hewlett-Packard Company v Marcel Wieland, NAF, Case No. FA95852).

The disputed domain name is virtually identical to the CORNING trademarks. Indeed, the addition of the letter “o” was intended to confuse and deceive end users as to source or sponsorship. Accordingly, the disputed domain name, if ever put to use in association with an active website, would likely confuse potential consumers into believing that the Respondent is somehow affiliated with, or endorsed by, the Complainant. Furthermore, the disputed domain name would put the Respondent in a position to reap a financial benefit if ever used. As the Respondent is engaged in a fraudulent scheme, it is reasonable to conclude that any active use of the disputed domain name would be for unlawful financial gain.

While the disputed domain name is inactive in the traditional sense (i.e., it does not resolve to an active website), the Complainant respectfully submits that the disputed domain name is indeed being used. In this case, the disputed domain name is being used as an email address in furtherance of a fraudulent scheme.

Accordingly, the disputed 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 mark as to source, sponsorship, affiliation, or endorsement.

Under the circumstances, the Complainant respectfully submits that the Respondent’s registration supports a finding under paragraph 4(b)(iv).

B. Respondent

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

6. Discussion and Findings

6.1. Language of the Proceeding

On December 17, 2021, the Registrar confirmed that the language of the Registration Agreement is Japanese. On the same day, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On December 20, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

Considering the following circumstances, the Panel, exercising its authority to determine the language of the proceeding under paragraph 11(a) of the Rules, has decided English as the language of the proceeding:

- The Complaint was filed in English;
- The Complainant is an American entity, and represented by a Canadian law firm;
- The Respondent’s address is in the Republic of Korea;
- The Respondent, using the disputed domain name as part of the sender’s email address, sent an email in English, demonstrating that the Respondent has ability to communicate in English;
- On December 17, 2021, the Center sent a communication to the Parties, in English and Japanese, regarding the language of the proceeding, but the Respondent did not comment on the language of the proceeding;
- The Respondent did not reply to the Complainant’s contentions; and
- Ordering the translation of the Complaint would only result in extra delay of the proceeding and additional cost for the Complainant.

6.2. Substantive Issues

A. Identical or Confusingly Similar

The Complainant owns a number of trademark registrations for CORNING, including a Canadian trademark registration, which is deemed to date back to September 1, 1932.

The disputed domain name consists of “coorning” and a gTLD, “.com”. With addition of the letter “o”, the disputed domain name entirely incorporates the Complainant’s trademark CORNING.

It is well-established that the gTLD “.com” should be disregarded in finding of confusing similarity.

The Complainant’s trademark CORNING is entirely incorporated in the disputes domain name and the addition of the letter “o” does not avoid a finding of confusing similarity. A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by UDRP panels to be confusingly similar to the relevant mark for purposes of the first element (section 1.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition).

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark within the meaning of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The disputed domain name resolves to an inactive website, but it is used as part of an email address to impersonate the Complainant. Such a use is not a use in connection with a bona fide offering of goods and services under paragraph 4(c)(i) of the Policy, nor a noncommercial or fair use under paragraph 4(c)(iii) of the Policy.

The Respondent’s name, Charlie Jang, has no similarity to “coorning”, the main part of the disputed domain name. There is no evidence that the Respondent has ever been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. The Respondent uses the disputed domain name to impersonate the Complainant, but not to identify itself. This fact sufficiently supports the finding that the Respondent has never been known by the disputed domain name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was registered on November 18, 2021, which was long after one of the Complainant’s early trademark registration was registered in Canada in 1932, or even earlier. Moreover, the fact that the Respondent uses the disputed domain name to impersonate the Complainant shows that the Respondent with the knowledge that the Complainant is a large business entity actively engaged in world trade, intentionally chose the disputed domain name to have the Complainant’s clients mistake it for the Complainant. Therefore, the Panel finds that the disputed domain name was registered in bad faith.

The Respondent uses the disputed domain name as part of its email address. Paragraph 4(a)(iii) does not require that the use be limited to a use in connection with a website. The Respondent uses the disputed domain name to impersonate the Complainant, and such a use is clearly a use in bad faith.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith within the meaning 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 <coorning.com> be transferred to the Complainant.

Keiji Kondo
Sole Panelist
Date: February 4, 2022