Monsanto Company v. Decepticons
Claim Number: FA0110000101536
Complainant is Monsanto Company, St. Louis, MO (“Complainant”) represented by John E. McKie, of Ladas & Parry. Respondent is Decepticons, Valencia, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <monsantos.com>, registered with Tucows, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 31, 2001; the Forum received a hard copy of the Complaint on November 2, 2001.
On November 1, 2001, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <monsantos.com> is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 2, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 23, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On December 5, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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.” 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.
A. Complainant asserts the following:
The disputed domain name is confusingly similar to the MONSANTO mark, in which Complainant holds full rights. Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent registered and used the disputed domain name in bad faith.
B. Respondent did not submit a Response in this proceeding.
Complainant, a company, has a commercial history that dates back to 1901. Complainant first registered the MONSANTO trademark on the Principal Register of the United States Patent and Trademark Office as Registration No. 315,300 in 1934, and has continuously used the mark in commerce since 1935.
Respondent registered the disputed domain name on March 10, 2000 and has used the disputed domain name to host inaccurate and potentially harmful material purportedly sponsored by Complainant and featuring Complainant’s logos. Respondent’s site also contains a fine-print copyright statement, crediting “Monsantos Company” with ownership of its contents.
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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the 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;
(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.
Complainant urges that the domain name in issue is identical to or confusingly similar to Complainant’s mark. Although not identical, the disputed domain name is confusingly similar to Complainant’s mark. The addition of the letter “s” to the mark does not defeat a claim of confusing similarity. See Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of the Complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark”); see also Blue Cross & Blue Shield Ass’n v. InterActive Communications, Inc., D2000-0788 (WIPO Aug. 28, 2000) (finding that a domain name which merely adds the letter ‘s’ to Complainant’s mark is sufficiently similar to the mark to cause a likelihood of confusion among the users of the Complainant’s services and those who were to view a web site provided by the Respondent accessed through the contested domain name).
Further, the addition of “.com” to the mark does not affect the domain name’s confusing similarity. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has established its long-held rights to and legitimate interests in the mark that is contained in its entirety in the domain name registered by this Respondent. Because Respondent failed to submit a Response to this proceeding, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that Respondent’s failure to produce requested documentation supports a finding for Complainant).
Moreover, by using Complainant’s mark and logo to provide information purportedly from Complainant, Respondent did not make a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i). See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that “unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”).
Similarly, since Respondent has provided no evidence to suggest that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii), the Panel may presume that Respondent is not commonly known by the domain name. Further, Respondent offered no evidence that Respondent is making or has made a legitimate noncommercial or fair use of the domain name—one that would be without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s service mark per Policy ¶ 4(c)(iii). See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess). To the contrary, the evidence permits an inference that Respondent had the intent to disrupt Complainant’s business and tarnish Complainant’s mark by providing potentially inaccurate information on Respondent’s misleadingly similar site. See Monty & Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9, 2000) (“The Panel does not dispute Respondent’s right to establish and maintain a website critical of (the Complainant). . . . However, the panel does not consider that this gives Respondent the right to identify itself as Complainant”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied; Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant also urges that Respondent acted in bad faith in registering and using the disputed domain name. Respondent attempted to mislead viewers accessing Respondent’s website by simulating and incorporating the MONSANTO mark and logos. The evidence permits the inference that by intentionally passing itself off as Complainant, Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).
Further, although Respondent did provide a copyright statement on its website identifying itself as the “Monsantos Company,” this does not preclude a finding of bad faith. See Ciccone v. Parisi (Madonna.com), D2000-0847 (WIPO Oct. 12, 2000) (finding that “[r]espondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights”). Respondent identified its website’s content in a highly visible manner as belonging to MONSANTO when Respondent made such statements as: “Monsanto cares about ‘your’ health and ‘your’ cancer, and we hear your concerns. That’s why we’ve gotten rid of our EqualTM and NutrasweetTM divisions—these products have been thought to be carcinogens for several years, even by our own scientists.” (Emphasis added.) This misrepresentation, in itself, supports a finding of bad faith. See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (finding that the Respondent registered the domain names, kwasizabantu.com, kwasizabantu.org, kwasizabantu.net, in bad faith where Respondent published negative comments regarding the Complainant’s organization on the confusingly similar website).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted. Accordingly, it is Ordered that the <monsantos.com> domain name be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 18, 2001.
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