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Cargill, Incorporated v. John Doe as Holder of Domain Name <cargillagricola.com>
Claim Number: FA1606001678480
Complainant is Cargill, Incorporated (“Complainant”), represented by Patrick J. Gallagher of Norton Rose Fulbright US LLP, Minnesota, USA. Respondent is John Doe as Holder of Domain Name <cargillagricola.com> (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cargillagricola.com>, 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.
Scott R. Austin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 7, 2016; the Forum received payment on June 7, 2016.
On June 8, 2016, Register.com, Inc. confirmed by e-mail to the Forum that the <cargillagricola.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 June 8, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 28, 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@cargillagricola.com. Also on June 8, 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.
A timely Response was received and determined to be complete on June 28, 2016.
On June 30, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Scott R. Austin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following contentions:
1. Since at least as early as 1865, Complainant has offered food, agriculture, financial and industrial products and services in the United States and internationally under the CARGILL mark.
2. Complainant has expended considerable effort and expense in offering quality goods and services under the CARGILL Marks, which have long been famous.
3. Complainant has registered the CARGILL word mark all over the world, including within the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 880,665, registered Nov. 11, 1969);
4. Complainant operates a website at www.cargill.com, which prominently displays the CARGILL Marks.
5. Respondent’s <cargillagricola.com> domain name is confusingly similar to Complainant’s mark because it incorporates the entire mark with the addition of the term “agricola,” and the generic top level domain (“gTLD”) “.com.”
6. Respondent has no rights or legitimate interests in the <cargillagricola.com> domain name.
7. Respondent is not commonly known by the disputed domain name;
8. Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <cargillagricola.com> domain name.
9. The disputed domain name misleadingly redirects Internet users to Complainant’s website.
10. Respondent has been using the <cargillagricola.com> domain to send fraudulent E-mails purporting to contract business on behalf of Complainant for financial gain.
11. Respondent is using the disputed domain in connection with an E-mail address used to pass itself off as Complainant while conducting business with third parties.
12. Respondent has registered and is using the <cargillagricola.com> domain name in bad faith.
B. Respondent makes the following contentions:
1. Respondent contends that although he is the individual listed as registrant in the Whois record, he is not the individual that registered the domain name.
2. Respondent contends it is the victim of identity theft, that his identity and credit card information was stolen to register the disputed domain name, <cargillagricola.com>, which disputed domain name was registered on May 25, 2016.
3. On May 30, 2016 Respondent noticed fraudulent credit card charges and reported them to his bank and the FTC.
4. Respondent contends that the emails referenced for correspondence in the Complaint, namely, cargillagricol@outlook.com and postmaster@cargrillagricola.com are unknown to Respondent and Respondent does not have access to them.
5. Respondent has provided the Panel with evidence, in its Response Annexes of the alleged fraudulent charges, a credit adjustment by Respondent’s bank for such charges and a copy of an unsigned “Identity Theft Victim's Complaint and Affidavit”, as allegedly submitted to authorities providing detailed facts including bank account numbers affected as well as a “Victim's FTC complaint number” assigned to Respondent for having reported the incident to the FTC.
6. Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
7. Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
8. Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
9. Respondent requests the domain name be transferred to Complainant.
Since at least as early as 1865, Complainant has used the CARGILL word mark, and has established rights in and registered the CARGILL word mark all over the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 880,665, registered Nov. 11, 1969).
Complainant’s marks were registered in the U.S and many other countries well before Respondent registered its domain name on May 25, 2016.
Respondent’s disputed domain name <cargillagricola.com> domain name is confusingly similar to Complainant’s mark because it incorporates the entire mark with merely the addition of the common term “agricola,” and the generic top level domain (“gTLD”) “.com.”
Respondent’s WHOIS information identifies Respondent as registrant of the disputed domain name.
Respondent is not commonly known by Complainant’s CARGILL mark, nor is Respondent authorized by Complainant to use Complainant’s mark.
Respondent is not affiliated with Complainant, nor an authorized employee, vendor, supplier, or distributor of Complainant’s goods or services.
Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <cargillagricola.com> domain name.
Respondent is using the disputed domain in connection with an E-mail address used to pass itself off as Complainant while conducting business with third parties.
Fraudulent e mails purporting to contract business on behalf of Complainant for financial gain have been sent from e mail addresses associated with the disputed domain name and as such the disputed domain name has been registered and is being used 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.
Preliminary Issue 1: Consent to Transfer
Respondent has consented to transfer the Disputed Domain Name to Complainant and asserts that he has been the victim of identity theft and someone using his name registered the disputed domain name, as discussed below. Respondent claims the true registrant has used his identity without his authorization, and thus Respondent does not actually control the domain name. Conversely, Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel.
The Panel notes that UDRP cases that have considered circumstance such as this, where the named Respondent agrees to transfer the domain name in question to Complainant, have taken widely disparate approaches to reach ultimately the same result, transfer of the domain name to the Complainant.
The cases that have dealt with the consent to transfer scenario appear to be split between two approaches. First, there are those cases where the Panel decides to forego the traditional UDRP analysis and order an immediate transfer of the domain name, considering that such consent represents the sufficient sole basis for a transfer without findings of fact or conclusions under Policy ¶ 4(a). See, e.g., Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
In contrast are those cases where the circumstances compel the Panel to rule on the merits and consider such consent as an element in the appreciation of all the Policy elements. See, e.g., Brainetics LLC v. Profile Group / DNS Manager, FA1302001486915 (Nat. Arb. Forum April 16, 2013) (Deciding to analyze the UDRP elements to deal with cybersquatting because “[T]he Panel finds as in other prior cases, that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them”); Krea Icerik Hizmetleri Ve Produksiyon Anonim Sirketi v. Sherene Blackett / Abstract Holdings International Ltd, FA1303001489266 (Nat. Arb. Forum April 29, 2013) (Although empowered to forego UDRP analysis, Panel will not do so where common request for transfer is absent and Complainant did not consent to transfer without decision on the merits); Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008) (“However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be [analyzed] along with the findings in accordance with the Policy”); Amegy Bank Nat’l Assoc. v. Admin, LLC, FA 132547 (Nat. Arb. Forum June 29, 2010); accord Gassan Diamonds B.V. v. Van Etten Bernardus Jacobus, AF-0149b (eResolution May 25, 2000) (finding that despite a willingness to transfer by the respondent, any lack of settlement or actual transfer compels panel to issue a decision to prevent recurring disputes). The scope of the Policy is to deal with cybersquatting, which has been defined as the “deliberate, bad faith, abusive registration of domain names in violation of others rights.” Brainetics LLC v. Profile Group / DNS Manager, FA1302001486915 (Nat. Arb. Forum April 16, 2013), quoting Final Report of the WIPO Internet Domain Name Process 29 (1999),available at: http://www.wipo.int/amc/en/processes/process1/report/finalreport.html.
Given that the use of the disputed domain name is in furtherance of a scam involving the fraudulent use of email addresses associated with the disputed domain name and fraudulent contracts with third parties solicited by the operators of the disputed domain name passing themselves off as Complainant for the sale of Complainant’s goods to unsuspecting businesses, the Panel is of the view that the transfer of the disputed domain name in this proceeding deserves to be accompanied by the Panel’s findings and their legal and factual basis in accordance with the Policy.
The Panel decides, therefore, that it will not forego the traditional UDRP analysis and order the immediate transfer of the domain name, but instead elects to make findings of fact regarding compliance with the Policy and analyze the case under the elements of the UDRP.
Preliminary Issue 2: Identity Theft
Respondent contends that it has been the victim of identity theft. In its Response, Respondent stated that, on May 30, 2016 Respondent noticed fraudulent credit card charges and reported them to the appropriate authorities. Respondent has provided the Panel with evidence in its Response Annexes of the alleged fraudulent charges, a credit adjustment by Respondent’s bank for such charges and a copy of an unsigned “Identity Theft Victim's Complaint and Affidavit”, as allegedly submitted to authorities providing detailed facts including bank account numbers affected as well as a “Victim's FTC complaint number” assigned to Respondent for having reported the incident to the FTC.
Although the Panel’s decision whether Respondent’s name should be redacted would be made easier had the evidence provided added proof such as a signed affidavit or submission receipt from the FTC, given the detail in the evidence of identity theft submitted the Panel is compelled to consider this submission as an implied request for redaction of the identity of the individual named as Respondent, even though no express request for redaction has been received from either party.
The Panel finds, however, that the person referenced in the Complaint as Respondent is the person listed in the WHOIS database as registrant, as confirmed by the registrar of record, Register.com, Inc. As such, the Panel finds the named Respondent is the “holder of a domain-name registration against which a complaint is initiated” which meets the definition of a “respondent” for the purposes of the Policy (see UDRP Rule 1—definition of “respondent”). The Panel is compelled to rely upon the evidence provided in the record and complete its role to decide this case on the merits to prevent recurring disputes, as discussed in more detail below. The Policy requires a determination of “bad faith” on the part of the Respondent to satisfy Policy ¶ 4(a)(iii).
The Panel also finds, however, that whoever operates the domain name at issue appears to be engaged in the theft of personal information and money from unsuspecting individuals and businesses for a living and is using such theft as a subterfuge to further its scheme of profiting from fraudulent sales of Complainant’s agricultural products. 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.” The Panel has determined that the circumstances of the present case are exceptional, including the claim of identity theft by Respondent, and as such warrant the redaction of Respondent’s personal information from the Panel’s decision. Consequently, based on such circumstances and in an abundance of caution, the Panel chooses to redact Respondent’s personal information from the decision. In Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Nat. Arb. Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Nat. Arb. Forum May 19, 2005), the panels omitted the respondents’ personal information from the decisions 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. See also Nat’l Westminster Bank plc v. [Redacted], FA 1028337 (Nat. Arb. Forum July 25, 2007).
Identical and/or Confusingly Similar: Policy ¶ 4(a)(i)
The at-issue domain name is confusingly similar to a mark in which the
Complainant has trademark rights.
Complainant offers food, agriculture, financial and industrial products and services in the United States and internationally under the CARGILL mark. Complainant demonstrates ownership of the CARGILL mark through registration with the USPTO (e.g., Reg. No. 880,665, registered November 11, 1969). See Compl.,Annex Ex. A.
Registration with the USPTO establishes a complainant’s 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).).
Next, Complainant argues that Respondent’s <cargillagricola.com> domain name is confusingly similar to the CARGILL mark as it incorporates the mark in its entirety with the addition of the term “agricola” which is Spanish for “Agriculture,” and the gTLD “.com.” Prior Panels have determined that the addition of common terms and gTLDs such as “.com” are minor differences that are insufficient to overcome a finding of confusing similarity under Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel agrees, and finds that Respondent’s <cargillagricola.com> domain name is confusingly similar to the CARGILL mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
Respondent lacks rights and legitimate interests in respect of the at-issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, 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.”).
Complainant takes the 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. The Panel notes that “[REDACTED]” is listed as registrant of the disputed domain name, the name of a living individual that the Panel finds is different in sight and sound from the disputed domain name. The Panel notes that Respondent/registrant has claimed identity theft and denied any connection to the <cargillagricola.com> domain name and the Panel concludes in light of the available evidence, 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 goes on to argue that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <cargillagricola.com> domain name. Rather, Complainant contends that the domain name redirects Internet users to Complainants own webpage. In addition, Complainant asserts that Respondent is sending fraudulent emails, as shown in Complaint Annex Exhibit E, purporting to contract for the sale of Complainant’s agricultural products on behalf of Complainant. See Compl. Annex Ex. E (numerous fraudulent emails sent from “sales@cargillagricola.com”).
Prior Panels have found such uses by a respondent to constitute neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Desko GmbH v. Mustafa Mashari, D2015-0817 (WIPO June 18, 2015) (finding that the Respondent’s scheme of using the disputed domain name to provide an email address to masquerade as the Complainant and then fraudulently sell software products was a scam and that Complainant had made out a prima facie case that the Respondent had no rights or legitimate interests in the disputed domain name); see also Better Existence with HIV v. AAA, FA 1363660 (Forum Jan. 25, 2011) (finding that “even though the disputed domain name still resolves to Complainant’s own website, Respondent’s registration of the disputed domain name in its own name fails to create any rights or legitimate interests in Respondent associated with the disputed domain name under Policy ¶ 4(a)(ii)”). This Panel agrees with these prior cases and finds that Respondent’s use of the <cargillagricola.com> domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Respondent registered and uses the at-issue domain name in bad faith.
The Panel notes at the outset that the articulated provisions of Policy ¶ 4(b), are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances as well as the specifically articulated provisions. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant has shown in Complaint Annex Exhibit E that Respondent uses the disputed domain to support an E-mail address used to attempt to fraudulently obtain wire transfers of money from third parties by impersonating Complainant, its employees or agents, that is “disruptive to Complainant’s business and demonstrates bad faith registration and use of the domain name in violation of Policy ¶ 4(a)(iii).” See Compl.Annex Ex. E (E-mails and invoices from the fraudulent E-mail addresses). Previous panels have determined that a respondent engages in bad faith registration and use under Policy ¶ 4(a)(iii) where it impersonates a complainant in an attempt to perpetrate fraud. See SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA14009001581255 (Forum Oct. 29, 2014) (“The Panel finds that Respondent’s use of the domain name’s e-mail suffix for fraudulent purposes illustrates Policy ¶ 4(a)(iii) bad faith.”).
Complainant argues that Respondent is attempting to scam Complainant’s customers and other businesses out of their money by confusing them into believing that Respondent is affiliated with Complainant further demonstrates evidence of bad faith. The Panel finds that Respondent’s attempt to pass itself off as Complainant in order to swindle e-mail recipients out of money and business information is evidence of a Policy ¶ 4(b)(iv) intent to register and use the domain name in furtherance of bad faith commercial confusion. See 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); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
The Panel finds, therefore, that Respondent registered and is using the domain in bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED to Complainant.
Accordingly, it is Ordered that the <cargillagricola.com> domain name be TRANSFERRED from Respondent to Complainant.
Scott R. Austin, Panelist
Dated: July 19, 2016
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