Freeport McMoRan, Inc. v. Junior God
Claim Number: FA2106001951334
Complainant is Freeport McMoRan, Inc. (“Complainant”), represented by Judd D. Lauter of Cooley LLP, California, USA. Respondent is Junior God (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fcxmail.com> (“Domain Name”), registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 16, 2021; the Forum received payment on June 16, 2021.
On June 18, 2021, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <fcxmail.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 June 21, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 2021 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@fcxmail.com. Also on June 21, 2021, 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 July 15, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Freeport-McMoRan Inc., engages in mineral, oil, and gas exploration services. Complainant has common law rights in the FCX mark based upon its use of the mark in connection with its business dating back to 1988. Respondent’s <fcxmail.com> domain name is confusingly similar to Complainant’s mark since it incorporates Complainant’s mark in its entirety, adding only the generic term “mail” and the generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights and legitimate interests in the <fcxmail.com> domain name. Respondent is not commonly known by the Domain Name, nor has Complainant authorized or licensed Respondent to use the FCX mark. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use because Respondent has made no demonstrable preparations to use the Domain Name for a legitimate purpose, except to a website that displays pay-per-click advertising.
Respondent registered and uses the <fcxmail.com> domain name in bad faith because the Domain Name fully incorporates Complainant’s well-known FCX mark and is used to generate revenue using pay-per-click advertising. Moreover, Respondent had constructive and/or actual knowledge of Complainant’s rights in the FCX mark based on the uniqueness of the mark and Complainant’s use of the mark which long predated Respondent’s registration of the Domain Name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the FCX mark. The Domain Name is confusingly similar to Complainant’s FCX mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.
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 and is being used in bad faith.
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; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant does not have any registered trade mark rights in the FCX mark. It is therefore necessary to consider whether Complainant holds common law rights in the FCX mark as Policy ¶ 4(a)(i) does not require a complainant to hold a registered trademark if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
Complainant Freeport McMoRan, Inc. provides mineral, oil and gas exploration services at a significant scale. Complainant states that it has been using FCX as an abbreviation and stock symbol as least as early as 1988. It has provided evidence that, while it appears to be primarily referred to by its corporate name, it also is commonly referred to by the abbreviation FCX and promotes its services under the FCX mark, chiefly through its corporate website at www.fcx.com. Previous panels have acknowledged rights in an acronym after long use and wide recognition. See Soc’y of St. Vincent de Paul v. Yip, D2004-0121 (WIPO May 25, 2004) (finding that the complainant acquired distinctive common law rights in the SVDP acronym because it had been used for many years to identify the complainant and the charitable services it provided). In addition, numerous panels have found common law trademarks established by reason of use as a domain name to offer and promote a party’s services; see TD Ameritrade IP Company, Inc. v. Domain Admin / Whois Privacy Corp. Claim Number: FA 1814302 (Forum Nov. 28, 2018) and Lucifer Lighting Company v. guorong / guo rong Claim Number: FA1882510 (Forum Mar. 18, 2020).
The Panel is satisfied from Complainant’s evidence as to length and manner of use that Complainant’s use of the FCX mark to promote its mining services on its website at www.fcx.com and through other media is sufficient to establish secondary meaning in that mark and hence Complainant has common law rights in the FCX mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that the <fcxmail.com> Domain Name is confusingly similar to the FCX mark as it fully incorporates the FCX mark adding only the generic term “mail” and the “.com” gTLD. The addition of a generic term and a gTLD are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the 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) and 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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the FCX mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Junior God” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is presently inactive but prior to the commencement of the proceeding resolved to a website which appears to be used to obtain click-through revenue by linking to third-party websites unrelated to any descriptive meaning of the Domain Name. Use of a domain name generate pay-per-click links unrelated to any descriptive meaning of the domain name is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Priceline.com LLC v. levesque, bruno, FA1506001625137 (Forum July 29, 2015) (“The Panel finds that Respondent’s attempt to divert Internet users who are looking for products relating to Complainant’s famous mark to a website unrelated to the mark does not engage in a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names, September 13, 2020, Respondent had actual knowledge of Complainant’s FCX mark. Complainant has used this mark since 1988 and has put on evidence of its global reputation; moreover it would be unlikely for a party to register a domain name that wholly incorporates the FCX mark and redirect it to a pay-per-click website with links unconnected to any genuine meaning absent any awareness of Complainant and its FCX mark (and intention to capitalize on Complainant’s reputation in its FCX mark). In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith in order to resolve to a website that provides a series of pay-per-click links for which Respondent would be expected to receive revenue. Use of a confusingly similar domain name to redirect Internet users to a website containing advertisements and links to third party websites for commercial gain is indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See 3M Company v. Nguyen Hoang Son / Bussiness and Marketing, FA1408001575815 (Forum Sept. 18, 2014) (finding that the respondent’s use of the disputed domain name to host sponsored advertisements for Amazon, through which the respondent presumably profited, indicated that the respondent had used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fcxmail.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: July 16, 2021
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