DECISION

 

J.R. Simplot Company v. Host Master / 1337 Services LLC

Claim Number: FA2309002063816

 

PARTIES

Complainant is J.R. Simplot Company ("Complainant"), represented by Jeanette Eriksson of FairWinds Partners LLC, District of Columbia, USA. Respondent is Host Master / 1337 Services LLC ("Respondent"), Saint Kitts and Nevis.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <simplotj.com>, registered with Tucows Domains Inc.

 

PANEL

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.

 

James Bridgeman SC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 27, 2023; Forum received payment on September 27, 2023.

 

On September 28, 2023, Tucows Domains Inc. confirmed by e-mail to Forum that the <simplotj.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 28, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 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@simplotj.com.

 

Also on September 28, 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 October 19, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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.

 

RELIEF SOUGHT

Complainant requests that the disputed domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant claims rights in the SIMPLOT mark based on its ownership of the international portfolio of registrations described below, and extensive use of the mark in its agricultural produce business since it was founded in Boise, Idaho, USA, in 1929. It has grown to become one of the world's largest privately held agricultural businesses selling products under the trademark SIMPLOT as well as many other brand names, having more than 13,000 employees, and operates in many countries around the world.

 

Complainant submits that as a result of the long usage and promotion its SIMPLOT mark, it has become well-known around the world by both agriculture industry professionals and members of the general public.

 

Complainant refers to examples which are exhibited in an annex to the Complaint, illustrating use of mark in relation to Complainant's goods and services over the years.

 

Complainant alleges that the disputed domain name <simplotj.com> is identical or confusingly similar to its SIMPLOT mark arguing that Respondent is using a copy of Complainant's SIMPLOT mark and merely adds the letter "j", which it submits is intended to resemble Complainant's trade name "J.R. Simplot Company", in combination with the generic Top Level Domain ("gTLD") extension <.com>.

 

Complainant submits that panelists appointed under the Policy have held in decisions too numerous to mention, that the mere addition of letters or hyphens to a trademark, creates a confusingly similar domain name. See, for example, Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) ("[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i)."); 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.").

 

Furthermore Complainant contends that the addition of the gTLD extension <.com> does nothing to alleviate confusion between the SIMPLOT mark and the disputed domain name. See, Focus Do It All Group v. Athanasios Sermbizis, D2000-0923 (WIPO Oct. 12, 2000) ("Indeed, it is well-settled that the mere addition of a TLD to a famous trademark does not avoid confusing similarity"); 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 namefrom a mark).

 

Complainant next alleges that Respondent has no rights or legitimate interest in respect of the disputed domain name, arguing that Respondent's actions are not a bona fide offering of goods or services under Policy ¶4(c)(i).

 

Complainant refers to screen captures which are exhibited in annexes to the Complaint, which illustrate that Respondent has used the disputed domain name for a phishing scheme seeking to fraudulently obtain products from Complainant's suppliers. Specifically, Respondent has sent phishing emails to certain suppliers attempting to acquire IT supplies and services through impersonation and fraud, using the confusingly similar disputed domain name as an email address.

 

Complainant submits that such activity has categorically been held not to confer any rights or legitimate interests in a disputed domain name. See, e.g., Rockwell Automation v. Thomas John / None, FA 1735949 (Forum July 11, 2017) ("Respondent has sent emails impersonating Complainant's Finance Manager in the UK region to fool unsuspecting email recipients into believing they are corresponding with Complainant through the sending of fraudulent purchase inquiry emails from the disputed domain name…. Therefore, the Panel finds that Respondent has not made a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain nameunder Policy ¶¶ 4(c)(i) or (iii)."). 

 

Complainant adds that the exhibited email correspondence shows that through this very common phishing scheme, Respondent is seeking to have the supplier ship valuable IT and computer equipment to the Respondent under the false pretense that the products have been ordered and will be paid for by the Complainant. Complainant submits that Respondent intends to receive such equipment in a fraudulent manner and without making any payment to the supplier.

 

Complainant submits that Respondent has previously been involved in similar schemes, citing for instance WPX Energy, Inc. v. Host Master, 1337 Services LLC, D2018-2438 (WIPO Dec. 13, 2018) where Respondent used the <us-wpxenergy.com> domain name to impersonate WPX Energy, Inc. and create false emails purporting to be genuine emails from one of WPX Energy's senior executives. The false emails were then used to order goods from the WPX Energy's suppliers using the documents created for the purported transactions to attempt to have WPX Energy pay for the goods and with the intention that the goods would be received by the Respondent free of charge.

 

Complainant refers to further exhibited screen captures which illustrate that when the address <https://www.Simplotj.com> is input in a browser, the disputed domain name redirects Internet users to Complainant's own website at <https://www.Simplot.com>, which Complainant submits is obviously intended to further Respondent's attempt at impersonating and passing itself off as Complainant.

 

Complainant adds that such activity by Respondent does not constitute use of the disputed domain nameto provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor in a manner that constitutes a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

Complainant adds that numerous past panels established under the Policy have confirmed that this type of use does not bestow legitimate rights or interests upon a respondent. See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) ("The Panel finds that using Complainant's mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant's actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .").

 

Complainant adds that the present case displays many similarities with three recent cases, J.R. Simplot Company v. Host Master / 1337 Services LLC, FA 2046477, J.R. Simplot Company v. Host Master / 1337 Services LLC, FA 2056046, and J.R. Simplot Company v. Host Master / 1337 Services LLC, FA 2059715, where Complainant succeeded against Respondent in proceedings brought under the Policy.

 

With respect to Policy ¶ 4(c)(ii), the concerned Registrar has disclosed that the owner of the disputed domain name is "Host Master / 1337 SERVICES LLC". Complainant submits that upon information and belief, Respondent is not commonly known by the disputed domain name or the term "Simplot", does not operate a business or other organization under the name "Simplot", and does not own any trademark or service mark rights in the word Simplot. See, Dell Inc. v. George Dell and Dell Net Solutions, D2004-0512 (WIPO Aug. 24, 2004) (Regarding the domain <dellnetsolutions.com> "there is no evidence that the Respondents' business has been commonly known by that name.").

 

Complainant adds that Respondent is also not using the disputed domain name for any fair, descriptive or nominative purpose under Policy ¶ 4(c)(iv); Complainant's suppliers and other internet users browsing to the disputed domain name, would initially be confused and think they were using Complainant's legitimate <www.Simplot.com> address; and they may never discover that they were actually being redirected to Complainant's site by a domain name that is not related to Complainant. Complainant submits that such use does not fit into any accepted category of fair use such as news reporting, comment and criticism, political speech, education, etc.

 

Finally, Complainant alleges that Respondent is an active cybersquatter who has engaged in a pattern of bad faith registration of domain names that are confusingly similar to trademarks in which the Respondent has no rights. Policy ¶ 4(b)(ii) and WIPO Overview 3.0 at 3.1.2 ("A pattern of abuse has also been found where the respondent registers, simultaneously or otherwise, multiple trademark abusive domain names corresponding to the distinct marks of individual brand owners."). 

 

Complainant argues that Respondent has a number of domain names in its portfolio that infringe other trademarks and has been the Respondent in a large number of proceedings under the Policy, and in addition to the abovementioned recent cases successfully brought by Complainant, other examples are WhatsApp Inc. v. Host Master, 1337 Services LLC, D2020-1818 (WIPO Sept. 15, 2020),  FC2, Inc. v. Host Master, 1337 Services LLC, D2019-2669 and Klaviyo, Inc. v. Host Master, 1337 Services LLC, WIPO Case No. D2019-2907).

 

Complainant next alleges that the disputed domain name was registered and is being used in bad faith, arguing that Respondent intentionally targeted the SIMPLOT mark without consent from Complainant.

 

It is contended that Respondent was on actual notice of Complainant's rights in its mark as a result of Complainant's extensive use of the mark which long predates the date on which Respondent acquired the disputed domain name as well as the fact that the SIMPLOT mark is a unique term that has no meaning other than to refer to Complainant.

 

Complainant adds adds that any claimed lack of knowledge of Complainant's mark by Respondent is simply not credible.

 

Furthermore, as the disputed domain name contains the entirety of Complainant's SIMPLOT mark and mimics Complainant's J.R. Simplot Company trade name as well as the address of Complainant's own website at <www.Simplot.com>, it is clear that Respondent created the disputed domain name with knowledge of Complainant's SIMPLOT mark in violation of, Complainant's trademark rights.

 

Complainant furthermore argues that Respondent has intentionally sought to cause confusion between the disputed domain name and the SIMPLOT mark in furtherance of a phishing scheme as described above.

 

In conclusion, Complainant argues that there is no plausible logic or good-faith rationale for Respondent to have registered the disputed domain name, set up MX records and redirect the disputed domain name to Complainant's website other than for it to further Respondent's impersonation scheme. Respondent's actions create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name constituting bad faith registration and use of the mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant markets and sells agricultural products under the SIMPLOT trademark for which it owns an international portfolio of registrations, including the following for which Complainant has provided copies of the registration certificates in an annex to the Complaint:

·       United States registered trademark SIMPLOT, registration number 789,704, registered on November 16, 1965 for fertilisers;

·       United States registered trademark SIMPLOT, registration number 846,389, registered on March 19, 1968 for goods in international class 29;

·       EUTM SIMPLOT, registration number 2147, registered on July 3, 1998 for goods in classes 1, 5, 29, 30 and 31;

·       Cambodian registered trademark SIMPLOT, registration number KH/M/1314164, registered on March 21, 2019 for goods in classes 5, 29, and 30;

·       International trademark registration SIMPLOT, registration number 257137m registered on November 27, 2016 for goods in class 5;

·       International trademark registration SIMPLOT, registration number 4014471220000, registered on February 13, 2019 for goods in class 30.

·       Complainant has an established Internet presence and maintains its website at <www.simplot.com>.

 

The disputed domain name was registered on September 18, 2023 and has been used to establish an email account from which Respondent has sent phishing emails, and Respondent has arranged that the disputed domain name resolves to Complainant's own website at <www.simplot.com>.

 

There is no information available about Respondent, except for that provided in the Complaint, the Registrar's WhoIs and the information provided by the Registrar in response to the request by Forum for details of the registration of the disputed domain name for the purposes of this proceeding. The record shows that Respondent has been the unsuccessful respondent in numerous proceedings under the Policy, including three successfully brought by Complainant.

 

The Registrar has confirmed that Respondent who has availed of a facility to have its name redacted on the published WhoIs, is the registrant of the disputed domain name.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

A.       Complainant's Rights

Complainant has provided convincing, uncontested evidence that it has rights in the SIMPLOT mark, established by the ownership of the portfolio of trademark and service mark registrations described above and the reputation and goodwill that it has established in the mark by extensive use in its business marketing and selling agricultural food products.

 

B.       Confusing Similarity

The disputed domain name <simplotj.com> consists of Complainant's SIMPLOT mark in its entirety, with the addition of the letter "j", in combination with the gTLD extension <.com>.

 

Complainant's SIMPLOT mark is the initial, dominant and only distinctive element in the disputed domain name. The addition of the letter "j" does not create any distinguishing character to the disputed domain name and does not prevent a finding of confusing similarity between the disputed domain name and Complainant's mark.

 

Similarly, the gTLD extension <.com> does not prevent a finding of confusing similarity as the circumstances of this proceeding, it would be considered to be a necessary technical requirement for a domain name registration.

 

This Panel finds therefore that the disputed domain name is confusingly similar to the SIMPLOT mark in which Complainant has rights, and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that

·       Respondent's actions are not a bona fide offering of goods or services under Policy ¶4(c)(i);

·       the email messages purporting to have been sent from the email account established by Respondent using the disputed domain name, copies of which are exhibited in annexes to the Complaint, illustrate that Respondent has used the disputed domain name for a phishing scheme seeking to fraudulently obtain products from Complainant's suppliers;

·       specifically, Respondent has sent phishing emails to at least one third party prospective supplier, attempting to acquire IT supplies and services through impersonation and fraud, using an email address that incorporates Complainant's SIMPLOT mark;

·       such activity has categorically been held not to confer any rights or legitimate interests in a disputed domain name;

·       through this very common phishing scheme, Respondent is seeking to have the supplier ship valuable IT and computer equipment to the Respondent under the false pretense that the products have been ordered and will be paid for by the Complainant;

·       Respondent has previously been involved in similar schemes, citing for instance WPX Energy, Inc. v. Host Master, 1337 Services LLC, WIPO Case D2018-2438 (WIPO Dec. 13, 2018) where Respondent was found to have used the <us-wpxenergy.com> domain name to impersonate WPX Energy, Inc. and create false emails purporting to be genuine emails from one of WPX Energy's senior executives to perpetrate a phishing scheme;

·       screen captures exhibited in an annex to the Complaint illustrate that when the address <https://www.Simplotj.com> , is input in a browser, the disputed domain name redirects Internet users to the Complainant's own https://www.Simplot.com website, which Complainant submits is obviously intended to further Respondent's attempt at impersonating and passing itself off as Complainant;

·       such activity by Respondent does not constitute 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), and does not bestow legitimate rights or interests upon Respondent;

·       the present case displays many similarities with three recent cases, J.R. Simplot Company v. Host Master / 1337 Services LLC, FA 2046477, J.R. Simplot Company v. Host Master / 1337 Services LLC ,FA 2056046, and J.R. Simplot Company v. Host Master / 1337 Services LLC, FA 2059715, in which Complainant succeeded against Respondent in proceedings under the Policy;

·       the Registrar has disclosed that the owner of the disputed domain name is named "Host Master / 1337 SERVICES LLC" and therefore Respondent is not commonly known by the disputed domain name or the term "Simplot", does not operate a business or other organization under the name "Simplot", and does not own any trademark or service mark rights in the word Simplot;

·       Respondent is also not using the disputed domain name for any fair, descriptive or nominative purpose under Policy ¶ 4(c)(iv) because Complainant's suppliers and other Internet users browsing to the disputed domain name, would initially be confused and think they were using the legitimate <www.Simplot.com> address of Complainant's own website; and they may never discover that they were actually being redirected to Complainant's site by a domain name that is not related to Complainant; such use does not fit into any accepted category of fair use such as news reporting, comment and criticism, political speech, education, etc.;

·       Respondent is an active cybersquatter who has engaged in a pattern of bad faith registration of domain names that are confusingly similar to trademarks in which the Respondent has no rights; other examples of Respondent's pattern of registering third party trademarks as domain names include WhatsApp Inc. v. Host Master, 1337 Services LLC, D2020-1818 (WIPO Sep. 15, 2020);  FC2, Inc. v. Host Master, 1337 Services LLC, WIPO Case No. D2019-2669; and Klaviyo, Inc. v. Host Master, 1337 Services LLC, WIPO Case No. D2019-2907).

 

It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.

 

Respondent has failed to discharge that burden and therefore this Panel must find that the Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant has adduced clear and convincing, uncontested evidence that it has registered trademark rights in the SIMPLOT mark dating back to 1965, which long predate the registration and first use of the disputed domain name <denamrin.com> which was registered on September 18, 2023.

 

SIMPLOT is a distinctive mark and Complainant has shown that it has long and extensive international reputation and goodwill which has grown since Complainant's agricultural products business was established in 1929.

 

It is most improbable that the disputed domain name which is almost identical to Complainant's mark, containing Complainant's SIMPLOT mark in its entirety with the mere addition of the letter "j", was chosen for any reason other than its similarity to Complainant's mark.

 

This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith with the Complainant in mind to take predatory advantage of the Complainant's goodwill and reputation in the SIMPLOT mark.

 

Complainant has shown in uncontested submissions that Respondent has used the disputed domain name to establish an MX record and has created an email account from which phishing emails have been sent. The exhibited emails purport to have been sent by a named "Director of Purchasing, J.R. Simplot Company, Inc." inviting the recipient to  "participate in our upcoming bidding process. Our organization requires IT equipment and seeks a trustworthy vendor capable of providing high-quality equipment and services to support our operations." 

 

Complainant avers that it has no association with sender of the emails and therefore this Panel finds that Respondent is using the disputed domain name in bad faith to send phishing emails for a fraudulent purpose, by purporting to impersonate Complainant in order to mislead and defraud suppliers.

 

Furthermore, Complainant has shown that Respondent has engaged in similar activities on a number of occasions and Complainant has successfully brought three Complaints against Respondent under the Policy.

 

Additionally the evidence shows that the registration and use of the disputed domain name, which is an intentional misspelling of Complainant's SIMPLOT name constitutes typosquatting which evidences registration and use in bad faith.

 

Finally the evidence shows that Respondent has arranged for the disputed domain name to resolve to Complainant's own website at <www.simplot.com>. In the circumstances described above, this act in itself constitutes use of the disputed domain name in bad faith, because on the balance of probabilities the redirection is intended to create the impression, among Internet users generally, but in particular recipients of phishing emails,that the disputed domain name is associated with Complainant.

 

As this Panel has found that the disputed domain name was registered and is being used in bad faith, the Complainant has succeeded in the third element of the test in Policy paragraph 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <simplotj.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

__________________________________________________________________

 

 

James Bridgeman SC, Panelist

Dated: October 19, 2023