Emerson.cloud

The timeline behind emerson.cloud

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION Emerson Electric Co. v. Domain Admin Claim Number: FA1611001704029 PARTIES Complainant is Emerson Electric Co. (“Complainant”), Missouri, USA. Respondent is Domain Admin (“Respondent”), Romania. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <emerson.cloud>, registered with Dynadot, LLC. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. David S. Safran, as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the Forum electronically on November 21, 2016; the Forum received payment on November 21, 2016. On November 22, 2016, Dynadot, LLC confirmed by e-mail to the Forum that the <emerson.cloud> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). On November 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@emerson.cloud. Also on November 29, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts. A timely Response was received and determined to be complete on December 12, 2016. On December14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David S. Safran, as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant Complainant contends that it has rights in the EMERSON mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,267,606, registered Feb. 21, 1984). Respondent’s <emerson.cloud> domain name is identical or confusingly similar to the EMERSON mark because it contains the mark along with the new generic top-level domain (“gTLD”) “.cloud,” which increases the likelihood of confusion because Complainant works in cloud-based computing. Complainant also contends that Respondent is not commonly known by the <emerson.cloud> domain name because it is not sponsored or affiliated with Complainant, despite being a former employee and because the available WHOIS information identifies “Domain Admin” as Registrant. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website contains pay-per-click links to third-party websites, some of which compete with or directly reference Complainant. Furthermore, Complainant contends that Respondent registered and uses the <emerson.cloud> domain name in bad faith because it responded to Complainant’s request to transfer with a demand for $10,000. Respondent uses the <emerson.cloud> domain name in bad faith because the resolving website contains pay-per-click links to third-party websites, some of which compete with or directly reference Complainant. Respondent registered the <emerson.cloud> domain name in bad faith because it did so with knowledge of Complainant’s rights in the EMERSON mark. B. Respondent Respondent contends that the <emerson.cloud> domain name is composed of generic terms which are used with many kinds of content. Respondent also contends that the <emerson.cloud> domain name is not used in any way related to Complainant because there is no content. The domain name is composed of generic terms which are used with many kinds of content. Furthermore, Respondent contends that the <emerson.cloud> domain name was not registered in bad faith because Complainant had no plans to use cloud based services at the time of domain name registration. The domain name is composed of generic terms which are used with many kinds of content. FINDINGS (1) The Panel finds that the domain is confusingly similar to a trademark mark in which Complainant has rights, Respondent has no rights or legitimate interests in respect of the domain name, and the domain name has been registered and is being used in bad faith. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (2) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (3) Respondent has no rights or legitimate interests in respect of the domain name; and (4) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar Complainant claims rights in the EMERSON mark through its registration with the USPTO (e.g., Reg. No. 1,267,606, registered Feb. 21, 1984) under which it offers a wide range of products and services in the industrial, commercial, and consumer markets. Complainant has provided this, and other registrations of the mark with the Office for Harmonization in the Internal Market and with the Romanian State Office for Inventions and Trademarks, in Exhibit A. As such, the Panel finds that Complainant holds rights in the EMERSON mark. See Direct Mktg. Co. S.p.A. v. Morelli, D2010-1335 (WIPO Sept. 6, 2010) (finding Complainant’s European Union Office for the Harmonization of the Internal Market (“OHIM”) trademark registration sufficient to establish complainant’s rights in its GIORNO NOTTE mark under Policy ¶ 4(a)(i)). Complainant argues Respondent’s <emerson.cloud> domain name is confusingly similar to the EMERSON mark because it contains the mark along with the new gTLD “.cloud.” Complainant contends that this gTLD increases the likelihood of confusion because Complainant works in cloud based computing. The Panel agrees that the <emerson.cloud> domain name is identical or confusingly similar to the EMERSON mark. See DD IP Holder LLC v. Phill Aspden, FA 1603215 (Forum Apr. 8, 2015) (finding that the disputed domain name <dunkin.coffee> is identical to Complainant's DUNKIN COFFEE registered mark, as gTLDs that reference goods or services offered under the registered mark may be taken into account). While Respondent contends that the <emerson.cloud> domain name is comprised of common and generic terms and as such cannot be found to be identical or confusingly similar to Complainant’s mark. However, the Panel finds that no evidence has been presented to indicate that the name “emerson” is a common or generic term for anything, while the numerouse tradmark registrations submitted by Plaintiff is held by the Panel to indicate that the term “emerson” is not a common and generic term. See, Cross Optical Group, Inc. v. PrivacyProtect.org / Domain Admin, Claim Number: FA1110001412176 (FORUM December 13, 2011) (holding that the trademark registrations of Complainant which constitute sufficient evidence that term of the domain name is not a generic word). Rights or Legitimate Interests The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). Complainant maintains that Respondent is not commonly known by the <emerson.cloud> domain name because it is not sponsored or affiliated with Complainant, despite being a former employee and because the available WHOIS information identifies “Domain Admin” as Registrant. Complainant has provided information indicating that Respondent is a former employee of Complainant or of a company affiliated with Complainant in Exhibit K. The Panel finds a lack of evidence to the contrary, and thus finds that Respondent has not been commonly known by the <emerson.cloud> domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark); see also Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000) (finding that a former employee does not acquire rights or legitimate interests in a domain name identical to the former employer's trademark). Complainant contends that Respondent fails to use the <emerson.cloud> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website contains pay-per-click links to third-party websites, some of which compete with or directly reference Complainant. Complainant has provided screenshots of the resolving website, in Exhibit C, to demonstrate this use. The Panel finds this evidence sufficient evidence that Respondent does not provide a bona fide offering of goods or services or a legitimate noncommercial or fair use. See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Registration and Use in Bad Faith Complainant claims that Respondent registered and uses the <emerson.cloud> domain name in bad faith because it responded to Complainant’s request to transfer the domain name with a demand for $10,000. Complainant has provided correspondence in Exhibit G to demonstrate this purported demand. The Panel agrees that such behavior evidences that Respondent has registered and uses the domain name in bad faith. See Galvanize LLC, dba Galvanize v. Brett Blair / ChristianGlobe Network, FA1405001557092 (Forum June 26, 2014) (finding that the respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(i) because it countered Complainant’s offer to buy the disputed domain name with an offer to sell the disputed domain name of $100,000). Complainant further contends that Respondent uses the <emerson.cloud> domain name in bad faith because the resolving website contains pay-per-click links to third-party websites, some of which compete with or directly reference Complainant. Complainant has provided screenshots of the resolving website, in Exhibit C, to demonstrate this use. The Panel finds this evidence sufficient to indicate that Respondent uses the domain name in bad faith according to Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Opffice Superstors, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Still further, Complainant alleges that Respondent registered the <emerson.cloud> domain name in bad faith because it did so with knowledge of Complainant’s rights in the EMERSON mark. Complainant urges that Respondent had such knowledge based on the following: the mark having been known internationally, as demonstrated through Exhibits F and J; Respondent’s choice to entirely incorporate the mark in the domain name; the use of the resolving website, mentioned above, including references to Complainant; and Respondent’s having been a former employee of Complainant or a former employee of an affiliate of Complainant, as demonstrated by Exhibits G and K. The Panel finds this is also sufficient to demonstrate that Respondent actually knew of Complainant’s rights in the EMERSON mark at the time of domain name registration, so that the Panel finds that Respondent registered the <emerson.cloud> domain name in bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <emerson.cloud> domain name be TRANSFERRED from Respondent to Complainant. David S. Safran, Panelist Dated: December 27, 2016 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.