Cargill, Incorporated v. William M. Carpenter
Claim Number: FA1603001665608
Complainant is Cargill, Incorporated (“Complainant”), represented by Patrick J. Gallagher of Norton Rose Fulbright US LLP, Minnesota, United States. Respondent is William M. Carpenter (“Respondent”), Tennessee, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cargillglobal.com>('the Domain Name'), registered with Register.com, Inc..
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.
<<Dawn Osborne of Palmer Biggs Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 14, 2016; the Forum received payment on March 14, 2016.
On March 15, 2016, Register.com, Inc. confirmed by e-mail to the Forum that the <cargillglobal.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. 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 March 16, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 5, 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@cargillglobal.com. Also on March 16, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 8, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal 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’s submissions can be summarised as follows:
Complainant has offered its food, agriculture, and related products and services in the United States and has advertised its goods and services under the CARGILL mark since at least as early as 1865. It operates a web site at Cargill.com. It owns hundreds of registrations for its CARGILL marks in the United States and other jurisdictions around the world for its CARGILL mark which were all issued long before the Domain Name was registered.
The addition of the term 'global' to the Complainant’s CARGILL mark in the Domain Name does not negate the similarity between the Domain Name and the Complainant’s mark. The addition of a gTLD such as .com is irrelevant in determining similarity of the Domain Name to the Complainant’s CARGILL mark.
Because the Complainant has made out a prima facie case the burden shifts to Respondent to show it has rights and legitimate interests in the Domain Name but it is clear that the Respondent has no rights or legitimate interests in the Domain Name. Respondent has no relationship, affiliation, connection, endorsement or association with the Complainant. It has not received any permission to use the Complainant's mark. There is no evidence to show the Respondent is commonly known by the Domain Name.
The site attached to the Domain Name directs Internet users to a parking page that providing hyperlinks incorporating the CARGILL mark and promoting and advertising goods and services of third parties that relate to and that compete with the goods and services of the Complainant.
Fraudulent e mails purporting to contract business on behalf of Complainant have been sent from sales@cargillglobal.com. Purportedly sent from Mr Xambre, an employee of Cargill's Brazil location, they were not, in fact, sent by him. The fraudulent e mails contracted for the sale of refined sunflower oil and include an invoice indicating payment for such a sale to an entity named Engineering Trade and Investment Limited based in Hong Kong. The e mails and the invoice incorporate the Complainant’s mark and its logo (also a registered trade mark in the United States). The Respondent received payment for the goods, but the goods were not provided. The enquiries from the victim of the fraud brought the Respondent's fraudulent activities to the Complainant’s attention. This is not bona fide offering of goods and services and Respondent has no rights or legitimate interests in the Domain Name.
Using a domain name in connection with a web site with parked links and diverting consumers from a mark owner's online location to a competitor's web site is, in itself, bad faith registration and use.
Use of a Domain Name as an e mail address used in connection with a fraudulent sales scheme that involves masquerading as the Complainant and soliciting fraudulent orders of goods is evidence of bad faith. Respondent attempts to capitalise on Complainant’s reputation in the food sector to perpetuate a fraudulent scam for commercial gain. These are improper and apparently illegal and criminal activities and such activities must be considered bad faith registration and use of the Domain Name.
The Domain Name is so obviously connected with the Complainant that use by anyone else is opportunistic bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has offered its food, agriculture, and related products and services in the United States under the CARGILL mark since at least as early as 1865. It operates a web site at www.cargill.com. It owns trade mark registrations for its CARGILL mark in the United States and other jurisdictions around the world which predate when the Domain Name was registered.
The site attached to the Domain Name directs Internet users to a parking page that providing hyperlinks incorporating the CARGILL mark and promotes and advertises goods and services of third parties that relate to and that compete with the goods and services of the Complainant.
Fraudulent e mails purporting to contract business on behalf of Complainant have been sent from e mail addresses associated with the Domain Name The fraudulent e mails contracted for the sale of refined sunflower oil and include an invoice indicating payment for such a sale to an entity named Engineering Trade and Investment Limited based in Hong Kong. The e mails and the invoice incorporate the Complainant’s mark and its logo (also a registered trade mark in the United States).
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Identical or Confusingly Similar
The Domain Name consists of the Complainant's CARGILL mark, the generic term 'global' and the gTLD .com.
Prior panels have found that adding a generic term does little to remove confusing similarity from a disputed mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v Healy/BOSTH D2001-0026 (WIPO Mar 23, 2001)(Finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term.)
The gTLD .com does not serve to distinguish the Domain Name from the CARGILL mark, which is the distinctive component of the Domain Names. See Red Hat Inc v Haecke FA 726010 (Nat Arb Forum July 24, 2006) (concluding that the domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Respondent is using the Domain Name to perpetuate an e mail scam on Internet users wishing to do business with the Complainant. Deceiving Internet users for fraudulent gain is not bona fide offering of goods and services under Policy 4 (c)(i) nor a legitimate non-commercial or fair use pursuant to Policy 4 (c) (iii). See Desko GmbH v Mustafa Mashari, D2015-0817 (WIPO June 18, 2015)(finding that Respondent’s scheme of using the domain name for an e mail address to masquerade as the Complainant for fraudulent purposes demonstrated that the respondent had no rights or legitimate interests in the domain name.) See also HD-Michigan Inc. v Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008)(finding that use for a web site featuring a series of advertising links to various third parties offering products and services in competition with the Complainant was not a bona fide offering of goods and services or a legitimate non-commercial or fair use).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
The Respondent is clearly passing itself off as the Complainant for the purpose of using the CARGILL name and logo in a scam. The panel finds the use of the Domain Name is confusing and deceptive and has been used on the Internet for fraudulent purposes for commercial gain.
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4 (b) (iv). In the light of this it is not necessary to consider further grounds of bad faith put forward by the Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cargillglobal.com> domain name be TRANSFERRED from Respondent to Complainant.
<<Dawn Osborne>>, Panelist
Dated: <<April 14, 2016>>
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