Masco Corporation v Beverly Burnett

WIPO Case No. D2024-4541

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Masco Corporation v. Beverly Burnett

Case No. D2024-4541

1. The Parties

Complainant is Masco Corporation, United States of America, represented by Demys Limited, United

Kingdom.

Respondent is Beverly Burnett, United States of America.

2. The Domain Name and Registrar

The disputed domain name <mascocorp.com> (the “Domain Name”) is registered with Global Domain Group

LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2024. On November 6, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 7, 2024, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

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 Respondent of the Complaint, and the proceedings commenced on November 13, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 5, 2024.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on December 13, 2024.
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.

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4. Factual Background

Complainant, incorporated in Delaware, United States of America, designs, manufactures and distributes decorative architectural products and plumbing products. Its business includes industrial products, with brands including BEHR paint; DELTA and HANSGROHE faucets, bath and shower fixtures; KICHLER decorative and outdoor lighting; LIBERTY branded decorative and functional hardware; HOT SPRING spas; and KRAUS faucet, bathing and showering products. It owns over 100 subsidiaries, operates 42 manufacturing facilities of which 30 are in North America, and employs approximately 18,000 people around the globe.

Complainant owns numerous registered trademarks for the MASCO mark, in numerous jurisdictions, including:

- United Kingdom registered trademark number 903496858 for the MASCO word mark, registered on

July 4, 2007;

- European Union registered trademark number 3496858 for the MASCO word mark, registered on July

4, 2007; and

-	Indian registered trademark number 1613006 for the MASCO word mark, registered on September 1,
2014.

In addition, Complainant owns and operates its official corporate website at the domain name <masco.com>.

The Domain Name was registered on September 4, 2024 and at the time of the filing of the Complaint, redirected to an inactive site. On the date the Domain Name was registered, two emails were sent from the Domain Name impersonating Complainant’s employee, to enquire about quotes for personal computers. At the time of the Decision, the Domain Name redirected to an inactive or error page.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the
Domain Name.

Complainant contends that (i) the Domain Name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith.

In particular, Complainant contends that it has trademark registrations for MASCO and that Respondent registered and is using the Domain Name with the intention to confuse Internet users looking for bona fide and well-known MASCO products and services.

Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use the Domain Name, which includes Complainant’s trademarks, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights.

B. Respondent

Respondent did not reply to Complainant’s contentions.

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6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant

has rights;

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name was registered and is being used in bad faith.

Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”) states that failure to respond to the complainant’s contentions would not by itself
mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an

admission that the complainant’s claims are true.

Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence of its rights in the MASCO trademarks, as noted above. Complainant has also submitted evidence, which supports that the MASCO trademarks are widely known and a distinctive identifier of Complainant’s products and services.

With Complainant’s rights in the MASCO trademarks established, the remaining question under the first
element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in
which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s trademark.
See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-
0842.

Here, the Domain Name is confusingly similar to Complainant’s MASCO trademarks. These trademarks are recognizable in the Domain Name. In particular, the Domain Name includes Complainant’s MASCO trademarks in their entirety, with the addition of the term “corp”, which is generally known as an abbreviation for “corporation”, in the Domain Name. The addition of the term “corp” in the Domain Name as noted does not prevent a finding of confusing similarity between the Domain Name and Complainant’s MASCO trademarks.

Thus, the Panel finds that Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must make a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with relevant evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its trademarks, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use

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Complainant’s trademarks or to seek registration of any domain name incorporating the trademarks.
Respondent is also not known to be associated with the MASCO trademarks and there is no evidence
showing that Respondent has been commonly known by the Domain Name. Further, the nature of the
Domain Name comprising Complainant’s trademarks in their entirety, with the inclusion of the term “corp”,
which is generally known as an abbreviation of the term “corporation”, indicates an awareness of
Complainant.

In the present circumstances, although the Domain Name is inactive, phishing emails were sent from the Domain Name impersonating Complainant’s employee, to enquire about quotes for personal computers.

Such use of the Domain Name is misleading and such potential attempts to reach Complainant’s MASCO vendors, or business partners, and may result in giving the false impression to Internet users that the Domain Name is owned by Complainant. The resulting confusion would cause damage to Complainant’s reputation, goodwill and interfere with Complainant’s business activities. The use of a domain name for email phishing and impersonation/passing off can never confer rights or legitimate interests on Respondent. See section 2.13, WIPO Overview 3.0.

Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does

not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under

paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain
Name in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the
purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is
the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration

in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the 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 you have engaged in a pattern of such

conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a

competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet
users to your website or other online location, by creating a likelihood of confusion with the complainant’s
mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or
service on your website or location.”

The Panel finds that Complainant provided ample evidence to show that registration and use of the MASCO trademarks long predate the registration of the Domain Name. Complainant is also well established and known. Indeed, the record shows that Complainant’s MASCO trademarks and related products and services are widely known and recognized. Moreover, Respondent’s impersonating emails confirm its knowledge of Complainant and its trademarks. Therefore, the Panel finds Respondent was aware of the MASCO trademarks when it registered the Domain Name.

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The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; and BellSouth Intellectual Property

Corporation v. Serena, Axel, WIPO Case No. D2006-0007.

Here, although the Domain Name does not resolve to an active website, phishing emails were sent from the Complainant’s reputation and goodwill, and interfere with Complainant’s business activities. The use of a domain name for email phishing and impersonation/passing off shows Respondent’s acts of bad faith, and is not rebutted by Respondent.

Domain Name impersonating Complainant’s employee, to enquire about quotes for personal computers.

At the time of the Decision, the Domain Name redirects to an inactive or error webpage, which does not change the Panel’s finding of Respondent’s bad faith.

Finally, considering the distinctiveness and reputation of the MASCO trademarks, the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, and particularly noting the Domain Name clearly targeted Complainant, the Panel finds that Respondent has registered and is using the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) 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 Domain Name <mascocorp.com> be transferred to Complainant.

/Kimberley Chen Nobles/
Kimberley Chen Nobles
Sole Panelist
Date: December 26, 2024