The J. M. Smucker Company v. Yolanda Ramirez
Claim Number: FA2103001935142
Complainant is The J. M. Smucker Company (“Complainant”), represented by Courtni Moorman, Ohio, USA. Respondent is Yolanda Ramirez (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jmsrnucker.com>, registered with Google 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 2, 2021; the Forum received payment on March 2, 2021.
On March 2, 2021, Google LLC confirmed by e-mail to the Forum that the <jmsrnucker.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 5, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 2021 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@jmsrnucker.com. Also on March 5, 2021, 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 formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 31, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgman SC 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 formal response from Respondent.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims trademark rights at common law acquired through long and extensive use of the J.M. SMUCKER COMPANY mark for over a century during which time the mark has acquired a secondary meaning, as described below.
Complainant submits that the secondary meaning is sufficient to give it enforceable exclusive common law trademark rights in the mark THE J. M. SMUCKER COMPANY and to give it standing to bring this Complaint. Citing Pueblo Mechanical & Controls, LLC v. Anne Bayliss / titan protection and consulting inc, FA 1925087 (Forum Jan. 14, 2021) (finding the complainant’s PUEBLO MECHANICAL mark acquired secondary meaning based on screenshots of the complainant’s legitimate website <pueblo-mechanical.com> dating back to 2003 and copies of media reports about the complainant’s business). In support of its claims to these rights Complainant refers to evidence of its reputation provided in exhibits annexed to the Complaint.
Complainant alleges that the disputed domain name <jmsrnucker.com> is confusingly similar to its THE J. M. SMUCKER COMPANY mark because the differences between them are insignificant to the extent that they are indistinguishable one from the other.
Noting the absence of the definite article in the disputed domain name, Complainant submits that previous panels have concluded that alterations such as merely deleting the spaces between the terms of Complainant’s mark, omitting punctuation and including generic terms such as “the” and “company,” and adding a generic top-level domain (“gTLD”), do not properly distinguish a disputed domain name from a mark. In support of this assertion Complainant cites numerous cases including The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum June 3, 2015) (finding confusing similarity where the <proscloset.com> domain name merely omitted the first term “the” from Complainant’s THE PROS CLOSET mark, eliminated spacing between words, and added the “.com” gTLD), and Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Complainant contends that the two-letter misspelling of Complainant’s THE J. M. SMUCKER COMPANY mark in the disputed domain name, which substitutes the adjacent letters “r” and “n.” for the letter “m” in the element SMUCKER, is insufficient to distinguish the disputed domain name. Complainant adds that when typed in lower case lettering, the combination of the letters “rn” is visually highly similar to the letter “m.” Previous panels have held that confusing similarity exists when substituting one letter with a visually similar letter combination of two letters. Citing Simon & Schuster, Inc. v. Joanna Harringtoni, WIPO Case No. D2020-2620, Dec. 12, 2020 (finding confusing similarity where the letter “m” in the complainant’s SIMON & SCHUSTER mark was substituted with the visually similar letter combination “rn” in the disputed domain name <sirnonandschuster.com>).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name, contending that Complainant has not authorized, licensed, or endorsed Respondent’s use of its THE J. M. SMUCKER COMPANY mark in the disputed domain name; that Respondent is not commonly known by the name “jmsrnucker”; and that the contact information for the registrant was originally hidden by a privacy shield, until The Google Domains Support Team identified Respondent as the registrant in an email dated March 2, 2021 and sent to the Forum.
Complainant submits that WhoIs information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged.” Citing Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name).
Furthermore, Complainant alleges that Respondent is engaged in the act of intentionally typosquatting Complainant’s THE J. M. SMUCKER COMPANY mark and email address by substituting the combination of the letters “r” and “n” adjacent to each other which is visually highly similar to the letter “m” in lower case type. Complainant submits that prior panels have found that acts of typosquatting demonstrate a lack of rights or legitimate interest in a domain name under Policy ¶ 4(a)(ii). See Morgan Stanley v. james kolo, FA1868471 (Forum Nov. 24, 2019) (finding evidence that respondent engaged in an intentional misspelling of the complainant’s mark, and therefore, the respondent had no rights or legitimate interest in the disputed domain name as the respondent was typosquatting).
Complainant refers to copy emails and screenshots adduced in evidence in annexes to the Complaint which it submits proves that Respondent has used the disputed domain name in bad faith to send fraudulent emails to Complainant’s business partner, falsely claiming that Complainant “updated [its] ACH/Wire Transfer information” and instructing Complainant’s business partner that “moving forward ACH payment are to be remitted to our secondery [sic] Bank account.” The exhibited screenshots show that Respondent manipulated the email thread to make it appear as though the emails were coming from Complainant’s real email accounts using “@jmsmucker.com”. By hovering over the email addresses used by Respondent in the messages, the hyperlinks that appear on screen show the email addresses are actually using the disputed domain name and email extension “@jmsrnucker.com.” Complainant adds that to make the scheme more believable, Respondent impersonated Complainant’s actual employees [name supplied] as a CC on the email, and [name supplied] in the signature block of the fraudulent emails.
Complainant alleges that these emails and screenshots prove that Respondent is using the disputed domain name in a fraudulent email scheme by impersonating Complainant’s employees and attempting to have money transferred from Complainant’s business partner to Respondent’s account. Such activities are not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding use of the disputed domain name to create an email address used to pass the respondent off as the complainant was not a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant adds that a screen capture of the web page to which the disputed domain name resolves, annexed to the Complaint, shows that the disputed domain name does not resolve to an active webpage, which further suggests a reasonable inference that Respondent is using Complainant’s mark in the perpetration of a fraud.
Complainant submits that the disputed domain name was registered and is being used in bad faith alleging that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in its THE J. M. SMUCKER COMPANY mark, arguing that Respondent’s knowledge can be inferred given Complainant’s longstanding and extensive use of the mark in commerce, and Respondent’s registration and use of visually similar domain name to attempt to perpetuate a fraudulent email scheme to disrupt Complainant’s business for its own financial gain.
Complainant again refers to the copy email correspondence and screen captures of emails sent by Respondent from the email account associated with the disputed domain name, attached in the annex to the Complaint and submits that they are further evidence of Respondent’s actual knowledge of Complainant’s rights in its THE J. M. SMUCKER COMPANY mark, because the message displays THE J. M. SMUCKER COMPANY mark in the signature block.
Complainant submits that previous panels have found that the registration of a domain name so to deceive an email recipient by impersonating an employee of a complainant for financial gain and to disrupt the business of a complainant may be evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”).
Complainant adds that bad faith registration and use may be inferred because the disputed domain name does not currently resolve to a webpage as shown in the screen capture annexed to the Complaint.
Complainant concludes that bad faith is further evidenced by Respondent having affirmatively concealed her true identity by means of a proxy service.
Complainant accepts that there are recognized legitimate uses of privacy and proxy registration services, but argues that “the totality of the circumstances which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use.” Name Acquisition Co. v. Derick Mohan, FA 1662120 (Forum Mar. 31, 2016) (finding the respondent’s use of a privacy service to be evidence of bad faith under Policy ¶ 4(a)(iii) where the respondent used the disputed domain name to attempt to pass himself off as the complainant).
B. Respondent
Respondent failed to submit a formal Response in this proceeding.
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 the Forum for verification of the registration details of the disputed domain name in the course of this proceeding.
Respondent had availed of a privacy service to conceal her identity on the published WhoIs and the Registrar confirmed that Respondent is the named 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 formal 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 adduced sufficient evidence for the purposes of the Policy, to prove that it has acquired trademark rights at common law in its THE J.M. SMUCKER COMPANY mark through long, continuous and extensive use of the mark by itself and its predecessors in title in its consumer food and beverage products, pet food, and pet snacks in North America for over a century.
While it appears that Complainant has not registered the mark, the uncontested evidence shows “THE J. M. SMUCKER COMPANY” mark has acquired secondary meaning sufficient to give it standing to bring this Complaint. It is well established that common law rights will satisfy the requirements of Policy ¶ 4(a)(i).
The disputed domain name <jmsrnucker.com> is composed of a misspelling of the principal and distinctive elements of Complainant’s THE J. M. SMUCKER COMPANY mark.
There are differences between the disputed domain name and Complainant’s mark, specifically, the non-distinctive elements, namely the spaces, periods after the letters “j” and “m”, the definite article and the word “company” are omitted from, and the adjacent letters “r” and “n” are substituted for the letter “m” in the element SMUCKER in the disputed domain name.
However, the overall impression created by the disputed domain name is that it reflects and references the dominant element of Complainant’s mark namely the name “J.M. SMUCKER”. Particularly in lower case typeface the letters “r” and “n” appear almost identical to the letter “m” in the element SMUCKER.
This Panel finds therefore that the disputed domain name is confusingly similar to the trademark THE J. M. SMUCKER COMPANY in which Complainant has rights and Complainant has therefore satisfied the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out an uncontested prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, contending that
· Complainant has not authorized, licensed, or endorsed Respondent’s use of its THE J. M. SMUCKER COMPANY mark in the disputed domain name;
· Respondent is not commonly known by the name “jmsrnucker”;
· the contact information for the registrant was originally hidden by a privacy shield, until The Google Domains Support Team identified the registrant as “Yolanda Ramirez” in an email dated March 2, 2021 and sent to the Forum;
· Respondent is engaged in the act of intentionally typosquatting Complainant’s THE J. M. SMUCKER COMPANY mark and email address by substituting the combination of the letters “r” and “n” adjacent to each other which is visually highly similar to the letter “m” in lower case type.
· the copy emails and screenshots adduced in evidence in annexes to the Complaint prove that Respondent has used the disputed domain name in bad faith impersonating Complainant’s employees in sending fraudulent emails to Complainant’s business partner;
· the disputed domain name does not resolve to an active webpage, which further suggests a reasonable inference that Respondent is using Complainant’s mark in the perpetration of a fraud.
It is well established that once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in a domain name in issue, the burden of production shifts to the respondent to prove such rights and interests. Respondent has failed to discharge the burden of production and therefore this Panel must find that 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).
Complainant’s name and trademark THE J. M. SMUCKER COMPANY is well-known and distinctive. The disputed domain name on the other hand has no meaning other than as a reference to Complainant’s name and mark.
The element “jmsrnucker” has no meaning, however by replacing the adjacent letters “r” and “n” with the letter “m”, it becomes identical to the dominant and distinctive element of Complainant’s mark. This Panel finds that on the balance of probabilities therefore the disputed domain name was chosen and registered in bad faith, in an act of typosquatting, with Complainant’s name and mark in mind, in order to target and take predatory advantage of Complainant, its name, mark and business.
This finding is supported by the manner in which the disputed domain name has been put to use. As a website address it is being passively held but it has been used to create an email account that has been used to send messages impersonating Complainant’s employees.
It is improbable that the disputed domain name was registered and chosen for any reason other than to target Complainant’s reputation and goodwill.
The uncontested evidence of the Complainant shows that the disputed domain name has been used in a technically sophisticated manner to impersonate Complainant’s personnel with the intention of perpetrating a fraud.
The email communications with Complainant’s business associate, shows that Respondent manipulated the email thread to create the misleading pretense that the communication was being sent by Complainant’s employees from Complainant’s real email account “@jmsmucker.com”. However, Complainant has shown that by hovering a cursor over the email address in Respondent’s fraudulent message, it is disclosed that the message in fact comes from the account associated with the disputed domain name: “@jmsrnucker.com.”
The sophisticated nature of the deception is further enhanced by Respondents impersonation of Complainant’s actual employees [names supplied] as a CC on the email, and in the signature block of the fraudulent emails in order to make the scheme more believable.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith. Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy requested.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jmsrnucker.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: March 31, 2021
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