J.R. Simplot Company v. Zhichao
Claim Number: FA2303002034859
Complainant is J.R. Simplot Company (“Complainant”), represented by Jeanette Eriksson of FairWinds Partners LLC, District of Columbia, USA. Respondent is Zhichao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <simplotcareers.com>, registered with Dynadot, LLC.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to Forum electronically on March 7, 2023; Forum received payment on March 7, 2023.
On March 8, 2023, Dynadot, LLC confirmed by e-mail to Forum that the <simplotcareers.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 9, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2023 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@simplotcareers.com. Also on March 9, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On April 5, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Petter Rindforth as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
The Complainant is a privately held agricultural business. Complainant has rights in the SIMPLOT trademark through Complainant’s registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 798,704, registered November 16, 1965). Respondent’s <simplotcareers.com> domain name is identical or confusingly similar to Complainant’s SIMPLOT trademark as it merely adds the generic word “careers” and the “.com” generic top-level-domain name ("gTLD").
Respondent lacks rights or legitimate interests in the <simplotcareers.com> domain name. Respondent is not commonly known by the disputed domain name. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as the disputed domain name resolves to a website with pay-per-click links that diverts users to other websites.
Respondent registered and uses the <simplotcareers.com> domain name in bad faith. Respondent’s website disrupts Complainant’s business as Respondent registered the disputed domain name to attract and mislead users for commercial gain. Additionally, Respondent had actual knowledge of Complainant’s rights to the SIMPLOT trademark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 798,704 SIMPLOT (word), registered November 16, 1965 for “fertilizers”; and
No. 846,389 SIMPLOT (word), registered March 19, 1968 for goods on Intl Class 29.
The Complainant is also the owner of the SIMPLOT (word) trademark as registered in a number of national and regional patent offices around the world, such as: European Union, Cambodia, Costa Rica, Republic of Korea, and Australia.
The disputed domain name <simplotcareers.com> was registered on March 9, 2020.
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 has rights in the SIMPLOT trademark through Complainant’s registration of the trademark with the USPTO (e.g. Reg. No. 798,704, registered November 16, 1965), as well as with other national and regional patent offices around the world. Registration of a trademark with the USPTO is sufficient to demonstrate rights in the trademark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel find that Complainant has demonstrated rights in the SIMPLOT trademark per Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <simplotcareers.com> domain name is identical or confusingly similar to Complainant’s SIMPLOT trademark as it merely adds the generic word “careers” and the “.com” gTLD. The addition of a generic or descriptive term and a gTLD fails to sufficiently distinguish a disputed domain name from a trademark per Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). In the present case, the addition of the descriptive word merely indicates that the disputed domain name link to a site with information to people that wants to find a job (“making a career”) at the Complainant. Therefore, the Panel find that the disputed domain name is confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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.”); see also 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).
Complainant contends that Respondent lacks rights or legitimate interests in the <simplotcareers.com> domain name as Respondent is not commonly known by the disputed domain name. When a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). The WHOIS information for the disputed domain name lists the registrant as “Zhichao”. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <simplotcareers.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed domain name resolves to a website with pay-per-click links that diverts users to other websites. Using a disputed domain name to resolve to a webpage with pay-per-click hyperlinks may indeed not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of Respondent’s disputed domain name resolving to a website with pay-per-click links. Complainant argues that users (potential future employees or current employees) would be confused by the disputed domain name and diverted to other websites not associated with the Complainant. The Panel agree with that conclusion and find that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that Respondent registered and uses the <simplotcareers.com> domain name in bad faith as Respondent’s website disrupts Complainant’s business by attracting and misleading users for commercial gain. Registration of a confusingly similar domain name with the intent to attract users for commercial gain by creating a likelihood of confusion with complainant’s mark is evince bad faith registration and use per Policy ¶ 4(b)(iv). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). As noted above, Complainant provides screenshots of the resolving website of the disputed domain name in which pay-per-click links are displayed relating to career and job opportunities. Complainant argues that Respondent receives compensation from these pay-per-click links. The Panel find that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Furthermore, Complainant argues that Respondent registered the <simplotcareers.com> domain name with actual knowledge of Complainant’s rights in the SIMPLOT trademark based on Respondent’s use of the SIMPLOT trademark and Respondent’s resolving website. Use of a trademark to divert Internet traffic to a disputed domain name can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith per Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant argues that the global reputation of the trademark as well as Respondent’s use to intentionally exploit the SIMPLOT mark for monetary gain demonstrate Respondent’s actual knowledge of Complainant’s rights in the trademark prior to registration of the disputed domain name. The Panel agrees, and finds that Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <simplotcareers.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: April 17, 2023
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