Corning Incorporated v 黄子蔚 (huang zi wei)
WIPO Case No. D2023-3639
•23-11-2023
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Corning Incorporated v. 黄子蔚 (huang zi wei)
Case No. D2023-3639
1. The Parties
Complainant is Corning Incorporated, United States of America (“United States”), represented by Gowling
WLG (Canada) LLP, Canada.
Respondent is 黄子蔚 (huang zi wei), China.
2. The Domain Name and Registrar
The disputed domain name <hr-corning.com> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina
( (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2023. On August 30, 2023, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On August 31, 2023, the Registrar transmitted by email to the Center its verif ication response disclosing registrant and contact information for the disputed domain name which dif fered f rom the named Respondent (Guang Xi) and contact information in the Complaint. The Center sent an email communication to Complainant on September 5, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant f iled an amendment to the Complaint on September 13, 2023.
On September 5, 2023, the Center informed the Parties in Chinese and English, that the language of the registration agreement for the disputed domain name is Chinese. On September 13, 2023, Complainant requested English to be the language of the proceeding. Respondent did not submit any comment on Complainant’s submission.
The Center verif ied that the Complaint together with the amendment to the Complaint satisf ied 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”).
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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 15, 2023. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2023. Respondent sent email communications to the Center on September 5 and September 15, 2023. The Center sent an email regarding possible settlement on
September 13, 2023. However, the Complainant did not request for suspension. Accordingly, the Center notif ied the commencement of panel appointment process on October 10, 2023.
The Center appointed Yijun Tian as the sole panelist in this matter on October 19, 2023. The Panel f inds 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
A. Complainant
Complainant, Corning Incorporated, is a company incorporated in the United States. Complainant, a world-leading innovator in materials science with over 165 years of groundbreaking inventions, leverages expertise in glass science, ceramic science, and optical physics, coupled with robust manufacturing and engineering capabilities. In 2018, Complainant generated USD 11.29 billion in revenue and accumulated over USD 30 billion between 2016 and 2018 (Exhibit 1 to the Complaint).
Complainant has rights in the CORNING and CORNING-related marks. Complainant is the owner of
numerous CORNING trademarks worldwide, including the United States trademark registration for
CORNING, registered on January 3, 1956 (registration number: 618649); the Canadian trademark
registration for CORNING, registered on October 20, 1972 (registration number: TMA186211); and the
Chinese trademark registration for CORNING, registered on December 20, 1991 (registration number:
576489).
Complainant also operates domain names that contain the CORNING mark in its entirety, such as
<corning.com>, which is the of f icial website of Complainant (Exhibit 2 to the Complaint).
B. Respondent
Respondent is 黄子蔚 (huang zi wei), China.
C. The Disputed Domain Name
The disputed domain name <hr-corning.com> was registered on August 5, 2023, after the registration of the
CORNING marks in 1956.
According to the Complaint and relevant evidence provided by the Complainant, the disputed domain name is currently resolved to an inactive website.
5. Parties’ Contentions
A. Complainant
Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.
Notably, Complainant contends that the disputed domain name is confusingly similar in that they wholly incorporate Complainant’s registered trademark CORNING in its entirety. The fact that the disputed domain name includes the term “hr” does nothing to diminish confusion.
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Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant contends that the disputed domain name was registered and is being used in bad faith.
Complainant requests that the disputed domain name be transferred to it.
B. Respondent
Respondent did not formally reply to Complainant’s contentions. Respondent informally replied in two emails in Chinese on September 5 and September 15, 2023, seeking clarif ication on Complainant’s intentions regarding the disputed domain name and expressed willingness to transfer it. They emphasized their non-involvement in illegal activities and left the decision to transfer or cancel the disputed domain name to Complainant.
6. Discussion and Findings
6.1 Procedural Issue: Language of the Proceeding
The language of the Registration Agreements for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specif ied otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
The Complaint was filed in English. Complainant requested that the language of the proceeding be English for several reasons, including the fact that:
| (a) | the disputed domain name is expressed in English (and not in Chinese or Mandarin). Respondent is unlikely to be prejudiced by the proceedings being in English. |
| (b) | The selection of Chinese as the language of the proceedings would cause an undue burden on Complainant in terms of translation expenses. |
| (c) | The selection of Chinese as the language of the proceedings would cause unduly delay. |
Respondent did not provide specific submissions regarding the language of the proceeding. Instead, they responded to the Center’s email on Language of Proceedings in English, apologizing for unintentionally registering the disputed domain name and expressing a willingness to cooperate in promptly transferring the disputed domain name to Complainant.
In exercising its discretion to use a language other than that of the registration agreement, a panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP
Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).
On the record, Respondent appears to be located in China and is thus presumably not a native English speaker, but considering the following aspects, the Panel has decided that the language of the proceeding shall be English: (a) the disputed domain name is registered in Latin characters, particularly in English (e.g., “hr” is the abbreviation of English words “human resource”), rather than Chinese script; (b) the generic Top-Level Domain (“gTLD”) of the disputed domain name is “.com”, so the disputed domain name seems to be prepared for users worldwide, particularly for English speaking countries; (c) Respondent responded in English to the Center’s email on Language of Proceedings, apologizing for unintentionally registering the disputed domain name and expressing a willingness to cooperate in promptly transferring the disputed domain name to Complainant on September 5, 2023; (d) the Center has notif ied Respondent of the
language of the proceeding in both Chinese and English, and Respondent has indicated no objection to
Complainant’s request that English be the language of the proceeding; (e) the Center also notif ied
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Respondent in both Chinese and English of the Complaint, and informed Respondent that it would accept a response in either English or Chinese, but Respondent chose not to f ile any substantive response.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
6.2 Substantive Issues: Three Elements
A. Identical or Confusingly Similar
It is well accepted that the f irst element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.
Based on the available record, the Panel finds Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.
The Panel f inds the entirety of the mark is reproduced within the disputed domain name. Accordingly, the
disputed domain name is identical or confusingly similar to the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.
While the addition of other terms “hr-” may bear on assessment of the second and third elements, the Panel f inds the addition of such terms do not prevent a f inding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.
Based on the available record, the Panel f inds the f irst element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in a disputed domain name.
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
prima facie prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.
Having reviewed the record, the Panel f inds Complainant has established a case that Complainant’s
More specif ically,
(i) there has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “corning”,
Complainant’s CORNING trademark, in the disputed domain name. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the CORNING marks or to apply for or use any domain name incorporating the CORNING marks.
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(ii) there has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name in 2023, af ter the CORNING marks became widely known. The disputed domain name is confusingly similar to Complainant’s CORNING marks and such composition carries a risk of implied af f iliation that renders any fair use implausible under the circumstances of this proceeding; and
(iii) there has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, the disputed domain name is currently resolved to an inactive website. Moreover, the Respondent has offered to settle the dispute, seemingly admitting its lack of rights or legitimate interests in the disputed domain name.
Based on the available record, the Panel f inds the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
In the present case, the Panel notes that Respondent has registered and used the disputed domain name in bad faith.
Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.
UDRP Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the record, the Panel f inds the non-use of the disputed domain name does not prevent a f inding of bad faith in the circumstances of this proceeding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. WIPO Overview 3.0, section 3.3.
Having reviewed the record, the Panel notes the distinctiveness or reputation of Complainant’s trademark, that the Respondent did not rebut any of the Complainant’s contentions despite sending two informal communications to the Center, and the composition of the disputed domain name, and f inds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a f inding of bad faith under the Policy.
Based on the available record, the Panel f inds the third element of the Policy has been established.
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 <hr-corning.com> be transferred to Complainant.
/Yijun Tian/
Yijun Tian
Sole Panelist
Dated: November 23, 2023
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