Cargill, Incorporated v. Jerry Ring
Claim Number: FA1605001673379
Complainant is Cargill, Incorporated (“Complainant”), represented by Patrick J. Gallagher of Norton Rose Fulbright US LLP, Minnesota, USA. Respondent is Jerry Ring (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cargill-sa.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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 4, 2016; the Forum received payment on May 4, 2016.
On May 5, 2016, Register.com, Inc. confirmed by e-mail to the Forum that the <cargill-sa.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 May 9, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 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-sa.com. Also on May 9, 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.
On May 15 and 16, 2016, the Forum received email communications from Respondent stating that his name and credit card had been used by a third party without his knowledge to register the disputed domain name.
Having received no formal Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 3, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant
Complainant offers food, agriculture, financial and industrial products and services in the United States and internationally under the CARGILL mark. Complainant owns the CARGILL mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 880,665, registered Nov. 11, 1969). Respondent’s <cargill-sa.com> domain name is confusingly similar to Complainant’s mark because it incorporates the entire mark with the addition of a hyphen, the letters “sa,” and the generic top level domain (“gTLD”) “.com.”
Respondent does not have rights or a legitimate interest in the <cargill-sa.com> domain name. Respondent is not commonly known by the disputed domain name. Complainant has not licensed or authorized Respondent to use the CARGILL mark in any way. Respondent is using the disputed domain name to pass itself off as Complainant or being affiliated with Complainant.
Respondent has registered and is using the disputed domain name in bad faith. Respondent is using the disputed domain name to pass itself off as Complainant or as being affiliated with Complainant. Respondent uses Complainant’s logos on its website, therefore Respondent registered the disputed domain name with actual knowledge of Complainant and its rights in the CARGILL mark.
Respondent
Respondent has not submitted a formal response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <cargill-sa.com> domain name.
PRELIMINARY ISSUE—IDENTITY THEFT
Respondent contends that he has been the victim of identity theft. On May 15 and 16, 2016, the Forum received email communications from Respondent stating that his name and credit card had been used by a third party without his knowledge to register the disputed domain name. On May 30, 2016, the Forum received email communications from Respondent to Complainant’s attorney stating he had no interest in the domain name and that it was not under Respondent’s control. Respondent has not provided any other evidence in support of a claim of stolen identity.
According to Policy ¶ 4(j), “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” In Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Forum May 19, 2005), the panels omitted the respondents’ personal information from the decisions, pursuant to Policy ¶ 4(j), in an attempt to protect the respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to the respondents.
Forum Supplemental Rule 15(b) states, “All requests pursuant to Policy paragraph 4(j) and Rule 16(b) to have a portion of the decision redacted, must be made in the Complaint, the Response, or an Additional Submission that is submitted before the Panel’s decision is published.” (emphasis added). In this case, neither Claimant nor Respondent have requested such redaction, therefore there is no redaction.
UDRP Rule 1 defines “respondent” as “the holder of a domain-name registration against which a complaint is initiated;” and Forum Supplemental Rule 1(d) further defines “the holder of a domain-name registration” as “the single person or entity listed in the WHOIS registration information at the time of commencement.” Precedent holds the registrar-confirmed registrant of a disputed domain (per the WHOIS at commencement of the proceeding) is the proper respondent, notwithstanding the possibility that said respondent’s identity was stolen. See, e.g., Banco Bradesco S/A v. Gisele Moura Leite, D2014-0414 (WIPO Apr. 30, 2014). This decision uses the term “Respondent” to reflect the individual that the Registrar has confirmed as the registrant of the disputed domain name.
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.”).
Complainant offers food, agriculture, financial and industrial products and services in the United States and internationally under the CARGILL mark. Complainant claims ownership of the CARGILL mark through registration with the USPTO (e.g., Reg. No. 880,665, registered Nov. 11, 1969). Registration with the USPTO establishes a complainants rights in a mark under a Policy ¶ 4(a)(i) analysis. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i).).
Complainant asserts that Respondent’s <cargill-sa.com> domain name is confusingly similar to Complainant’s mark because it incorporates the entire mark with the addition of a hyphen, the letters “sa”, and the gTLD “.com.” Complainant claims that “sa” is a reference to “Société Anonyme,” a legal forum. The additions of a hyphen and a top level domain have been held irrelevant in differentiating a disputed domain name from a mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Further, the addition of generic letters or words to a Complainant’s mark, does not sufficiently distinguish the domain name from the mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Therefore, the Panel finds the <cargill-sa.com> domain name is confusingly similar to the CARGILL mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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), 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) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also 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.”).
It is Complainant’s position that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant alleges that Respondent is not commonly known by the disputed domain name, and Respondent has not been licensed or authorized to use the CARGILL mark. “Jerry Ring” is listed as registrant of the disputed domain name. Respondent has claimed identity theft and denied any connection to the <cargill-sa.com> domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Y Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Complainant further alleges that Respondent has failed to use the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant alleges that Respondent uses the disputed domain name for to host a webpage displaying “Website under Construction,” with Complainant’s registered CARGILL trademark and logo, along with links to information about Complainant’s products. Complainant argues such behavior is likely to mislead Internet users into believing that Respondent is affiliated with Complainant. Past panels have held that such use is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use of a disputed domain name. See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). The Panel agrees with Complainant and finds that Respondent’s passing off behavior does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.
Complainant has proved this element.
Complainant argues that Respondent has engaged in bad faith registration and use of the domain name. Complainant contends that Respondent has displayed bad faith under Policy ¶ 4(b)(iii) by disrupting Complainant’s business. To support this claim, Complainant notes that the domain name resolves to a webpage that displays Complainant’s product information. Further, Complainant contends that the “Website under construction” banner across the top of the page will confuse Internet users into believing Complainant is not doing business. Past panels have found that use of a domain name to divert Internet users and present a complainant’s products consists of Policy ¶ 4(b)(iii) bad faith. See Fossil, Inc. v. NAS, FA 92525 (Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant). The Panel finds that Respondent’s display of Complainant’s products diverts Internet users to those competitors, and therefore finds bad faith under Policy ¶ 4(b)(iii).
Complainant contends that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. It is argued that by trying to pass itself off as Complainant, Respondent has created a likelihood of confusion from which it is attempting to profit. Past panels have found bad faith under Policy ¶ 4(b)(iv) where the domain name was used to display complainant’s products. See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products). Thus, the Panel finds bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the CARGILL mark. Complainant argues that Respondent's offering of Complainant's own products and competing products at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant has proved this element.
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 <cargill-sa.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: June 8, 2016
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