Cargill, Incorporated v. Cargill Stock, Inc
Claim Number: FA0807001214695
Complainant is Cargill, Incorporated (“Complainant”), represented by William Schultz, of Merchant & Gould P.C., Minnesota, USA. Respondent is Cargill Stock, Inc (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cargillstock.com>, registered with Tucows 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 10, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 11, 2008.
On July 10, 2008, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <cargillstock.com> domain name 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 July 14, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 4, 2008 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 7, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <cargillstock.com> domain name is confusingly similar to Complainant’s CARGILL mark.
2. Respondent does not have any rights or legitimate interests in the <cargillstock.com> domain name.
3. Respondent registered and used the <cargillstock.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Cargill, Inc., is an international provider of food, agricultural, and risk management products and services. Complainant is one of the world’s largest international animal nutrition companies. Complainant’s Risk Management division assists businesses in identifying their price risk management issues and creates tailored risk management products such as hedging products, investor products and producer products. Complainant has registered the CARGILL mark in numerous jurisdictions across the globe for a variety of uses, including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,976,862 issued July 26, 2005) for financial services. Additionally, Complainant’s Risk Management division also maintains and operates its main website at the <commoditypricerisk.com> domain name.
Respondent’s <cargillstock.com> domain name was registered on April 28, 2008 and currently resolves to a website closely mimicking Complainant’s website at the <commoditypricerisk.com> domain name. Respondent’s website represent’s itself as Complainant Inc., doing business as “Cargill Stock, Inc.” Additionally, Respondent has used the disputed domain name to fraudulently apply for credit from lenders under Complainant’s name as, “Cargill, Inc. d/b/a Cargill Stock, Inc.”
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
The Panel finds that Complainant has sufficiently established rights in the CARGILL mark through its registration of the mark with the USPTO pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that the complainant demonstrated its rights in the SPORTSCENTER mark through its valid trademark registrations with the USPTO and similar offices around the world).
The <cargillstock.com> domain name incorporates Complainant’s CARGILL mark in its entirety followed by the generic term “stock” and the generic top-level domain (“gTLD”) “.com.” The gTLD can be disregarded for the purposes of Policy ¶ 4(a)(i) as irrelevant. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The inclusion of the generic term “stock” also does nothing to negate a finding of confusingly similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Am. Online, Inc. v. Miller, FA 180625 (Nat. Arb. Forum Sept. 15, 2003) (finding confusing similarity where “[t]he domain name includes Complainant’s mark with the addition of the descriptive word “hot,” which does not dispel any confusion arising from the inclusion of Complainant’s mark in the domain name.”). For all of the aforementioned reasons, the Panel finds that Respondent’s <cargillstock.com> domain name is confusingly similar to Complainant’s CARGILL mark pursuant to Policy ¶ 4(a)(i).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).” Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007). However, once Complainant has made its case, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. See F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”).
Respondent has not replied to the Complaint. Therefore, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). This presumption will be evaluated against the record and the elements listed under Policy ¶ 4(c). See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant alleges that, even though the WHOIS information for the disputed domain name identifies Respondent as “Cargill Stock, Inc.,” there is nothing else in the record to indicate that Respondent is or ever was commonly known by the disputed domain name. Complainant states that it has never granted Respondent permission or license to use the CARGILL mark in any way. Without any additional information, the Panel finds that Respondent is not commonly known by the <cargillstock.com> domain name pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (“[O]ther than Respondent’s infringing use of the ULTIMATE ELECTRONICS mark on its web page and in its domain name . . . , there is no evidence that Respondent is commonly known by the <ultimateelectronics.net> domain name pursuant to Policy ¶ 4(c)(ii), or that there is any other entity besides Complainant authorized to trade as ULTIMATE ELECTRONICS.”).
When a disputed domain name uses a complainant’s mark to offer counterfeit versions of the products and services offered under that mark, this fails to be a bona fide offering of goods or services. See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”). Likewise, if a disputed domain name is used to or does cause confusion with a complainant’s website, and that confusion stands to offer a significant advantage to the respondent, this does not qualify as a legitimate use or otherwise establish rights under Policy ¶ ¶ 4(c)(i) or (iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use). The <cargillstock.com> domain name practically copies Complainant’s website at the <commoditypricerisk.com> domain name, incorporating most elements and simply substituting the Cargill, Inc. division name “Cargill Risk Management” for “Cargill Stock, Inc.” Moreover, there is evidence that Respondent used this website associated with the disputed domain name to fraudulently apply for credit from lenders by associating it with Complainant. The Panel finds that this illegitimate use does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
The <cargillstock.com> domain name incorporates Complainant’s CARGILL mark in its entirety and perpetuates a website that is almost identical to one of Complainant’s websites operated under its financial division. The disputed domain name has then been used to portray Respondent as Complainant or affiliated with Complainant to fraudulently apply for credit. The Panel finds these acts and use of the disputed domain name to provide unequivocal evidence that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) generally. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also 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).
Moreover, the Panel finds this situation to qualify as bad faith under Policy ¶ 4(b)(iv), because it appears that Respondent has attempted to commercially benefit by fraudulently obtaining credit based on a false affiliation with Complainant. A fraudulent use of Complainant’s mark for commercial benefit through the <cargillstock.com> domain name is further evidence under Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent attempts to profit from its diversionary use of the complainant's mark when the domain name resolves to a commercial website and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness).
The Panel concludes that Complainant has satisfied 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 <cargillstock.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 18, 2008
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