DECISION

 

ConAgra Foods RDM, Inc. v. stephen paul / Stepheniee

Claim Number: FA1905001845425

 

PARTIES

Complainant is ConAgra Foods RDM, Inc. (“Complainant”), represented by Caroline Chicoine of HUSCH BLACKWELL LLP, Missouri, USA.  Respondent is stephen paul / Stepheniee (“Respondent”), Georgia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <conagrabrands.us>, registered with Tucows Domains Inc..

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 29, 2019; the Forum received payment on May 29, 2019.

 

On May 30, 2019, Tucows Domains Inc. confirmed by e-mail to the Forum that the <conagrabrands.us> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name.  Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On June 3, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 2019 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@conagrabrands.us.  Also on June 3, 2019, 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.

 

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On June 27, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 to the usTLD Dispute Resolution Policy (the "Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum’s Supplemental Rules and any rules and Principles of Law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant is a Fortune 500 company that began in 1919 and current is the 4^th largest US food company, as well as a leader in key food categories including 2^nd largest frozen retail business, 3^rd largest in condiments and sauces, and a top 10 snacking company. Complainant has rights in the CONAGRA BRANDS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,413,453, registered Feb. 27, 2018). See Compl. Annex D. Respondent’s <conagrabrands.us> domain name is confusingly similar to Complainant’s CONAGRA BRANDS mark as the disputed domain name wholly incorporates Complainant’s mark with the addition of the “.us” country-code top-level domain (“ccTLD”).

 

2.    Respondent has no rights or legitimate interests in the <conagrabrands.us> domain name. Respondent is not commonly known by the disputed domain name nor did Complainant give license, permission, or authorization to Respondent to use the CONAGRA BRANDS mark. Respondent fails to make a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. Instead, Respondent’s domain name is almost identical to Complainant’s legitimate website that creates a misleading impression that Respondent is associated with Complainant. Furthermore, Respondent participates in a fraudulent phishing scheme impersonating Complainant’s employees.

 

3.    Respondent registered and used the <conagrabrands.us> domain name in bad faith by disrupting Complainant’s business for commercial gain. Respondent’s registration and use of the disputed domain name for the purpose of defrauding Internet users through a phishing scheme demonstrates bad faith. Respondent had actual knowledge of Complainant’s rights in the CONAGRA BRANDS mark based on the similarities between Respondent’s and Complainant’s legitimate website.

 

B.   Respondent

1.    Respondent failed to submit a response to this proceeding.

 

FINDINGS

1.    Respondent’s <conagrabrands.us> domain name is confusingly similar to Complainant’s CONAGRA BRANDS mark.

 

2.    Respondent does not have any rights or legitimate interests in the <conagrabrands.us> domain name.

 

3.    Respondent registered or used the <conagrabrands.us> domain name 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:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations set forth in a complaint.

 

Identical and/or Confusingly Similar

Complainant claims to have rights in the CONAGRA BRANDS mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to show rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017)

(“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with a copy of its registration for the CONAGRA BRANDS mark (e.g. Reg. No. 5,413,453, registered Feb. 27, 2018). See Compl. Annex D. Therefore, the Panel finds that Complainant has rights in the CONAGRA BRANDS mark per Policy ¶ 4(a)(i).

 

Complainant further argues that Respondent’s <conagrabrands.us> is confusingly similar to Complainant’s CONAGRA BRANDS mark as the disputed domain name wholly incorporates Complainant’s mark, with the addition of the “.us” ccTLD. The addition of a ccTLD to a fully incorporated mark is insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See TTT Moneycorp Limited v. Mebrat Biniam, FA 1737316 (Forum July 22, 2017) (“The Panel finds that the disputed domain name, <moneycorp.us>, is confusingly similar to Complainant’s valid and subsisting trademark, MONEYCORP.  Complainant has adequately pled its rights and interests in and to this trademark.  Respondent arrives at the disputed domain name by merely adding the g TLD “.us” to the trademark.  This is inadequate to distinguish the disputed domain name from Complainant’s trademark.”). Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s CONAGRA BRANDS mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

Complainant argues that Respondent has no rights or legitimate interests in the <conagrabrands.us> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name nor has Respondent been authorized or licensed by Complainant to use the CONAGRA BRANDS mark. A respondent lacks rights or legitimate interests in a domain name if a complainant does not license or authorize a respondent to use the mark and the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). There is nothing in the record to suggest that Complainant has authorized or licensed Respondent to use Complainant’s CONAGRA BRANDS mark. Additionally, the WHOIS information Identifies Respondent as “stephen paul / stephaniee.” Therefore, the Panel agrees and finds that Respondent has no rights or legitimate interests in the <conagrabrands.us> domain name per Policy ¶ 4(c)(iii).

 

The Panel further agrees that there is nothing in the available evidence that indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, this Panel concludes that Respondent has failed Policy ¶ 4(c)(i).

 

Complainant further argues that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <conagrabrands.us> domain name. Instead, Respondent’s domain name resolves to an almost identical website to Complainant’s legitimate website that creates a misleading impression that Respondent is associated with Complainant. Use of a domain name to create an impression that Respondent is affiliated or associated with Complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv). See iFinex Inc. v. Yuri Hefetz / Genie-Solution, FA 1789385 (Forum July 9, 2018) (holding that the respondent’s mimicking the complainant’s website in order to cause existing or potential customers to falsely believe they are setting up a new account with the complainant is prima facie evidence of the respondent’s lack of rights and legitimate interests in the disputed domain name). Here, Complainant provides screenshots within the Complaint of Respondent’s domain name, showing that the disputed domain name copies the layout of Complainant’s website. See Compl. Pg. 9. Additionally, the careers tab on Respondent’s domain name redirects users to an unaffiliated domain name. Therefore, the Panel finds that Respondent failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv).

 

Furthermore, Complainant contends that Respondent participates in a fraudulent phishing scheme by impersonating Complainant’s employees, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Use of a domain name in furtherance of a phishing scheme is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent lacked rights and legitimate interests in the domain name because it used the name to resolve to a website virtually identical to the complainant’s to prompt users to enter their login information so that the respondent may gain access to that customer’s cryptocurrency account). Here, Complainant provides copies of an email sent from an email address associated with the disputed domain name in which Respondent purportedly impersonates Complainant’s CFO in attempt to gather personal information. See Compl. Annex. G. Therefore, the Panel agrees that Respondent’s use of the domain name to engage in a phishing operation is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(ii) or (iv).

 

Registration or Use in Bad Faith

Complainant argues that Respondent registered and uses the <conagrabrands.us> domain name in bad faith by disrupting Complainant’s business and attracting Internet users for commercial gain by creating a likelihood of confusion with Complainant’s mark. Use of a disputed domain name to pass off as an employee of a complainant in furtherance of a phishing scheme can demonstrate bad faith under Policy ¶ 4(b)
(iii) and/or (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). The Panel recalls that Complainant provides copies of an email sent from an email address associated with the disputed domain name in which Respondent purportedly impersonates Complainant’s CFO in attempt to gather personal information. See Compl. Annex. G. Therefore, the Panel agrees and finds that Respondent engaged in bad faith by using the disputed domain name to disrupt Complainant’s business per Policy ¶ 4(b)(iii) and/or (iv).

 

Complainant further argues that Respondent registered and acted in bad faith by attempting to defraud Internet users through a phishing scheme. Use of a domain name in furtherance of a phishing scheme may be evidence of bad faith per Policy ¶ 4(a)(iii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)). The Panel recalls that Complainant provides copies of an email sent from an email address associated with the disputed domain name in which Respondent purportedly impersonates Complainant’s CFO in attempt to gather personal information. See Compl. Annex. G. Therefore, the Panel agrees and finds that Respondent’s use of a phishing scheme is evidence of bad faith registration and use per Policy ¶ 4(a)(iii).

 

Lastly, Complainant argues that Respondent had knowledge of Complainant’s rights in the CONAGRA marks due to the similarities between Respondent’s domain name and Complainant’s legitimate website. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). 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.”); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant’s contends that Respondent’s use of the disputed domain name to pass off as Complainant via email demonstrates Respondent’s actual knowledge of Complainant’s rights in the mark at the time of registration. The Panel recalls that Complainant provides copies of an email sent from an email address associated with the disputed domain name in which Respondent purportedly impersonates Complainant’s CFO in attempt to gather personal information. See Compl. Annex. G. The Panel therefore finds that Respondent had actual knowledge of Complainant’s rights in the CONAGRA mark at the time of registration of the disputed domain name, thus constituting bad faith registration under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <conagrabrands.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  July 10, 2019