Cargill, Incorporated v. Domain Finance Inc.
c/o Minakumari Periasamy
Claim Number: FA0808001220250
PARTIES
Complainant is Cargill, Incorporated (“Complainant”), represented by William Schultz, of Merchant & Gould,
P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cargil.com>,
registered with Enom, 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.
The Honorable Charles K. McCotter, Jr. (Ret.)
as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 13, 2008; the National Arbitration Forum received a
hard copy of the Complaint on August 14, 2008.
On August 13, 2008, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <cargil.com>
domain name is registered with Enom, Inc. and that the Respondent is the
current registrant of the name. Enom,
Inc. has verified that Respondent is bound by the Enom, 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 August 18, 2008, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 8, 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 postmaster@cargil.com by e-mail.
An electronic Response was received on September 8, 2008, but was
deemed deficient pursuant to Supplemental Rule #5 because it was not received
in hard copy by the Response deadline.
In its discretion, the Panel will consider Respondent’s
submission. See Telstra Corp. v. Chu,
D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the
lateness of the response is solely in the discretion of the panelist); see also J.W. Spear & Sons PLC v. Fun League
Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where
the respondent submitted a timely response electronically, but failed to submit
a hard copy of the response on time, “[t]he Panel is
of the view that given the technical nature of the breach and the need to
resolve the real dispute between the parties that this submission should be
allowed and given due weight”).
On September 17, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National Arbitration
Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <cargil.com> domain name is confusingly similar to Complainant’s CARGILL mark.
2. Respondent does not have any rights or legitimate interests in the <cargil.com> domain name.
3. Respondent registered and used the <cargil.com> domain name in bad faith.
B. Respondent
Not specifically addressing the allegations of the Complaint, Respondent simply responds that the title of the <cargil.com> site “is being changed to Cargil Offshore Energy .. . .[so as to] cancel any impression of conflict of interest.”
FINDINGS
Complainant, Cargill,
Incorporated is an international provider of food,
agricultural, industrial oils and lubricants, and risk management products and
services. Cargill is one of the
world’s largest international animal nutrition companies with over 175 animal
nutrition plants worldwide. Cargill also
maintains 51 oilseed processing plants around the world as a part of its
industrial oils and lubricants business.
Cargill also operates an energy trading business. Complainant has extensively used and
advertised the CARGILL mark in association with a wide range of products and
services dating back to at least as early as 1865. Complainant maintains a website at <cargill.com>.
Respondent, Domain Finance Inc., registered the domain name <cargil.com>
on February 28, 1997. From 1997 to 2002, Respondent did nothing
with the site. In 2002 to 2005,
Respondent associated the domain name with a World News website, a feed service
located at <wn.com>. From 2006 to
2008, Respondent used the domain name in connection with a pay-per-click
website that included reference to Cargill.
After Cargill sent a cease and desist letter that Respondent amended its
website to the current site for Cargil Offshore Energy.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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 first registered its
CARGILL mark with the United States Patent and Trademark Office (“USPTO”) on
November 11, 1969 (Reg. No. 880,665).
Complainant has also provided evidence of multiple additional registrations
of its CARGILL mark with the USPTO since that time. The Panel finds that these registrations
sufficiently establish Complainant’s rights in its CARGILL mark pursuant to
Policy ¶ 4(a)(i).
See
Respondent’s <cargil.com> domain name contains Complainant’s CARGILL
mark with the omission of one “l,” and the addition of the generic top-level
domain “.com.” The Panel finds
Respondent’s disputed domain name is confusingly similar to Complainant’s mark
pursuant to Policy ¶ 4(a)(i) because it capitalizes on
a common typographical error of Internet users.
The Panel also finds the addition of a top-level domain is not relevant
in evaluating the disputed domain name because top-level domains are a required
element of every domain name. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb.
Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to
words, a respondent does not create a distinct mark but nevertheless renders
the domain name confusingly similar to the complainant’s marks); see
also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum
May 8, 2000) (finding that <davemathewsband.com> is a common misspelling
of the DAVE MATTHEWS BAND mark and therefore confusingly similar); see also Busy Body, Inc. v. Fitness Outlet
Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic
top-level domain (gTLD) name ‘.com’ is . . . without
legal significance since use of a gTLD is required of domain name registrants .
. . .").
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.”).
Complainant contends Respondent is
not commonly known by the <cargil.com> domain name.
The WHOIS information lists Respondent as “Domain Finance Inc. c/o
Minakumari Periasamy,” and the record does not
indicate Respondent has ever been known by the disputed domain name. Additionally, Complainant contends it has
never authorized Respondent to use its CARGILL mark in any manner. Therefore, the Panel finds Respondent is not
commonly known by the <cargil.com>
domain name pursuant to Policy ¶ 4(c)(ii). See Ian
Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable
evidence to support the assertion that a respondent is commonly known by a
domain name, the assertion must be rejected); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name).
Complainant alleges Respondent failed to make an active use of the
dispute domain name from 1997 until 2002.
Complainant provides evidence of the website, showing that it merely
stated “Welcome to the Future Website of cargil.com.” The Panel finds Respondent’s failure to make
an active use of the disputed domain name for five years was not 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). See
Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (finding
respondent’s failure to make an active use of the <aolfact.com> domain
name for over six months was evidence that the respondent lacks rights and
legitimate interests in the domain name); see also Vestel Elektronik Sanayi ve Ticaret AS v.
Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“Merely registering the domain
name is not sufficient to establish rights or legitimate interests for purposes
of paragraph 4(a)(ii) of the Policy.”).
Complainant contends that from 2002 until 2005, Respondent’s disputed
domain name redirected an Internet user to the <wn.com> domain name,
which featured a world news website. The
Panel finds Respondent’s use of the disputed domain name was not 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). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting
customers, who are looking for products relating to the famous SEIKO mark, to a
website unrelated to the mark is not a bona
fide offering of goods or services under Policy ¶ 4(c)(i),
nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see
also Golden Bear Int’l, Inc. v.
Kangdeock-ho, FA 190644 (Nat. Arb. Forum
Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to
Complainant’s mark to divert Internet users to websites unrelated to
Complainant's business does not represent a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Furthermore, Complainant asserts that from 2006 until 2008,
Respondent’s disputed domain name resolved to a website which featured links to
the third-party websites of Complainant’s competitors. The Panel finds Respondent’s use of the
disputed domain name was not 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). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum
June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to
market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and
services.”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that
the respondent was not using the domain names for a bona fide offering
of goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website that offered
services that competed with those offered by the complainant under its marks).
Complainant states it sent a cease-and-desist letter to
Respondent on May 9, 2008. After this
correspondence was sent, Complainant maintains Respondent once again altered
the content of the disputed domain name by redirecting Internet users to the
<wn.com> domain name. The Panel
finds Respondent’s current use of the disputed domain name is not 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). See WeddingChannel.com
Inc. v. Vasiliev,
FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that
the respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or
services as contemplated by the Policy); see also Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's
registration and use of the <gayaol.com> domain name with the intent to
divert Internet users to Respondent's website suggests that Respondent has no
rights to or legitimate interests in the disputed domain name pursuant to Policy
Paragraph 4(a)(ii).”).
Additionally, Complainant alleges Respondent is engaging in
typosquatting through its uses of the disputed domain name. The Panel finds Respondent’s use of a
disputed domain name that is merely a typographical rendition of Complainant’s
CARGILL mark is evidence Respondent lacks rights and legitimate interests in
the disputed domain name pursuant to Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat.
Arb. Forum Sept. 19, 2003)
(finding that the respondent lacked rights and legitimate interests in the
disputed domain names because it “engaged in the practice of
typosquatting by taking advantage of Internet users who attempt to access
Complainant's <indymac.com> website but mistakenly misspell Complainant's
mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v.
Party Night, Inc., FA 165155 (Nat.
Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>,
<ltdcommmodities.com>, and <ltdcommodaties.com> domain
names were intentional misspellings of Complainant's LTD COMMODITIES mark
and this “‘typosquatting’ is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names”).
The Panel concludes that
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends Respondent previously failed to make an active use of the disputed domain name for a period of five years. The Panel finds Respondent’s failure to make an active use of the disputed domain name over five years is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s failure to make an active use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).
Complainant also asserts Respondent previously used the disputed domain name to display links to third-party websites that competed with Complainant. The Panel finds Respondent’s use of the disputed domain name was evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Additionally, Complainant contends Respondent’s disputed domain name previously and currently redirects an Internet user to the <wn.com> domain name, which is unrelated to Complainant. In between redirecting the disputed domain name, Respondent allegedly displayed links to the websites of Complainant’s third-party competitors. Complainant alleges that Respondent presumably received compensation for these uses of its disputed domain name in the form of click-through or referral fees. The Panel finds Respondent’s attempt to profit from the goodwill Complainant has established in its CARGILL mark is evidence of bad faith registration and use pursuant to 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 Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Furthermore, Complainant maintains Respondent is engaging in the practice of typosquatting. The Panel finds Respondent’s use of a common typographical error of Complainant’s CARGILL mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical error of Internet users seeking the complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).
The Panel concludes that Complainant has satisfied Policy ¶ 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 <cargil.com>
domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.),
Panelist
Dated: October 1, 2008
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