Cargill, Incorporated v. Foods and Beverages
Claim Number: FA1609001695680
Complainant is Cargill, Incorporated (“Complainant”), represented by Patrick J. Gallagher of Norton Rose Fulbright US LLP, Minnesota, United States. Respondent is Foods and Beverages (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cargill--international.com>, registered with Register.com, Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 27, 2016; the Forum received payment on September 27, 2016.
On September 29, 2016, Register.com, Inc. confirmed by e-mail to the Forum that the <cargill--international.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 September 30, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 20, 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@cargill--international.com. Also on September 30, 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 October 26, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant offers food, agriculture, financial, and industrial products and services in the United States and internationally under and in connection with the CARGILL mark. Complainant has registered the CARGILL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 880,665, registered Nov. 11, 1969), which demonstrates Complainant’s rights in its mark.
The <cargill--international.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the geographic term “international” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the domain name. Respondent has never been commonly known by the domain name, and Respondent has not requested or received any authorization, permission, or license from Complainant to use the CARGILL mark. Further, Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s domain name resolves to a website containing links to goods and services related to those offered by Complainant. Additionally, Respondent’s resolving website contains links that incorporate the CARGILL mark. Finally, Respondent is using an email address associated with the domain name to impersonate one of Complainant’s employees, Eduardo Xambre; the fraudulent e-mails have contracted for the sale of soybean meal and include an offer for sale made on behalf of “Cargill S.A..”
Respondent registered and is using the domain name in bad faith. First, Respondent uses the domain name to host competing hyperlinks. Second, Respondent uses an email address associated with the domain name in connection with a fraudulent sales scheme that involves passing itself off as Complainant. Third, because of Respondent’s use of a confusingly similar domain name, it is clear that Respondent registered the domain name with at least constructive knowledge of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the CARGILL mark through its registration of such mark with the USPTO and through its other registrations worldwide.
Respondent is not affiliated with Complainant and has not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademark.
Respondent uses the at-issue domain name to address a website containing links to goods and/or services related to those offered by Complainant. Additionally, Respondent’s email from the at-issue domain name contains the CARGILL mark and logo; the mark is also found on some of the website’s links. Respondent uses an email address associated with the at-issue domain name to impersonate one of Complainant’s employees.
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 (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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the CARGILL mark with the USPTO is sufficient to demonstrate Complainant’s rights in such mark under the Policy. It is irrelevant that Respondent may operate outside of the trademark registrar’s jurisdiction. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
The at-issue <cargill--international.com> domain name contains Complainant’s entire CARGILL trademark followed by two hyphens then the generic geographic descriptor “international”. Respondent’s at-issue domain name ends with the top level domain name “.com”. However, the differences between Respondent’s domain name and Complainant’s CARGILL mark are insufficient to differentiate one from the other for the purposes of the Policy. Therefore, the Panel finds that the <cargill--international.com> domain name is confusingly similar to Complainant’s CARGILL trademark under Policy ¶ 4(a)(i). See Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also, Google Inc. v. S S/Google
International, FA 1625724 (Forum August 4, 2015) (“the addition of the generic term ‘international’ within the Disputed Domain Name fails to adequately distinguish the Disputed Domain Name from the Complainant’s Mark” when the disputed domain name contained the entirety of the Complainant’s mark); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “Foods and Beverages” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <cargill--international.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s domain name addresses a website containing links to goods and services related to those offered by Complainant. The domain name is further used to sponsor an email address used to impersonate one of Complainant’s employees. The address is used to abet a fraudulent scheme whereby internet users are tricked into entering into faux contracts with “Cargill S.A.” when in fact they are dealing with Respondent. Indeed, the emails from Respondent’s phony address even contained Complainant’s logo and trademark. Using the domain name in neither of the aforementioned manners demonstrates a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”); see also, Church Mutual Insurance Company v. Paul Looney, FA 1668317 (Forum May 17, 2016) (“Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the <churchrnutual.com> domain name. Respondent registered and uses the disputed domain name and an associated email account to impersonate Complainant and acquire personal or financial information from Complainant or Complainant’s customers.”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent’s domain name was registered and used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above regarding rights and interests, Respondent uses the domain name to host links to products or services that relate to, and may compete with, those offered by Complainant. Using the confusingly similar domain for such purpose demonstrates bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv). See Red Hat, Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Red Hat, Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Additionally and as also mentioned above, Respondent uses an email address at the <cargill--international.com> domain name in connection with a fraudulent scheme that involves Respondent masquerading as Complainant. Respondent’s use of a <cargill--international.com> email address to pass itself off as Complainant constitutes bad faith registration and use of the at-issue domain name. See Church Mutual Insurance Company v. Paul Looney, FA 1668317 (Forum May 17, 2016) (“Respondent is using the <churchrnutual.com> domain name in bad faith. Respondent registered and uses the disputed domain name and an associated email account to impersonate Complainant and acquire personal or financial information from Complainant or Complainant’s customers.”); see also, Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
Finally, Respondent registered <cargill--international.com> domain name with actual knowledge of Complainant’s CARGILL trademark. Respondent’s knowledge of Complainant’s CARGILL mark is inferred from the notoriety of the mark, as well as from Respondent’s scheme to improperly exploit the mark as discussed above. Under the circumstances, it is inconceivable that Respondent was unaware of Complainant’s mark when it registered the domain name. Respondent’s actual knowledge of Complainant’s rights in the CARGILL mark prior to registering the at-issue <cargill--international.com> domain name further urges that Respondent registered such domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cargill--international.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 26, 2016
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