Cargill, Incorporated v. RN WebReg c/o
RareNames, Inc.
Claim Number: FA0904001260307
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 <cargills.com>,
registered with Registration Technologies,
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.
Terry F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 30, 2009; the National Arbitration Forum received a
hard copy of the Complaint on May 1, 2009.
On May 1, 2009, Registration Technologies, Inc. confirmed by e-mail to
the National Arbitration Forum that the <cargills.com>
domain name is registered with Registration Technologies, Inc. and that the
Respondent is the current registrant of the name. Registration Technologies, Inc. has verified
that Respondent is bound by the Registration Technologies, 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 May 6, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of May 26, 2009 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@cargills.com by e-mail.
A timely Response was received and determined to be complete on May 26,
2009.
An Additional Submission was timely received from Complainant on May
29, 2009. A reply to this Additional
Submission was subsequently timely filed by Respondent.
On May 29, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant alleges, among other things, that:
Complainant is an international provider of food, agricultural, financial and industrial products and services.
Since 1865, Complainant has used and advertised its famous CARGILL brand extensively in association with the marketing of its products and services.
Complainant has invested millions of dollars developing and
marketing its business under the CARGILL brand and mark.
Because of the extensive promotion of the CARGILL
brand and mark, Complainant has developed substantial goodwill and customer loyalty
under this distinctive, widely recognized trademark, and Complainant therefore has common
law rights in its mark which predate registration of the contested domain name.
Complainant also owns trademark registrations for
the CARGILL mark filed with the United States Patent and Trademark Office
(“USPTO”) in connection with the sale of food and food products, as well as
Complainant has not licensed its
CARGILL trademark to Respondent.
Respondent registered the disputed <cargills.com> domain name
on April 20, 2005.
The disputed domain name is confusingly similar to Complainant’s CARGILL mark.
Respondent has no trademark rights or any other
right to or legitimate interest in the CARGILL mark or in the disputed domain
name.
Respondent has registered and uses the domain
name for, among other reasons, the purpose of acquiring commercial gain by
offering the domain name for sale.
Respondent currently uses the website associated
with the disputed domain name to host commercial links that are related to the
products sold by Complainant, including “Cargill Health and Food,” “Cargill
Foods,” and “Cargill Grain Market.”
Respondent receives income
for each click-through or sale made via those links.
Consumers are likely to be confused as to the possibility that the website located at <cargills.com> is sponsored or endorsed by or affiliated with Complainant.
Respondent is not commonly known by the name Cargills.
Respondent had constructive or actual knowledge of Complainant’s rights in the CARGILL mark when it registered the contested domain name.
Respondent registered and uses the
domain name <cargills.com> in
bad faith.
B. Respondent
Respondent alleges, among other things, that:
Complainant does not have exclusive rights to the word “Cargill,” which
is not a “coined” or unique phrase, but rather merely a common surname.
The term “Cargill’s” is not exclusively associated with Complainant’s business, and Complainant does not have exclusive rights to the plural or possessive form of a common surname such as “Cargill’s”.
Respondent has rights to and legitimate interests in the <cargills.com> domain.
Respondent had no prior knowledge of
Complainant’s interest in the possessive and/or plural form of the common
surname “Cargill.”
Respondent did not register the disputed
domain name in order to sell it to Complainant, to disrupt its business, to
prevent it from acquiring a domain name reflecting its trademark, or to confuse
Internet users.
Respondent is
in the business of marketing Internet services.
Respondent uses the disputed domain name to
offer Internet users information and links relating to travel, in particular,
travel to New Zealand, including, but not limited to the city of Dunedin—home
of Cargill’s Castle.
Respondent’s policy is to register and maintain only domain names that
incorporate common words or phrases, descriptive terms, and/or words as to
which it considers no single party has exclusive rights.
Respondent disputes that the CARGILL mark and the domain name <cargills.com> are confusingly
similar.
Respondent has posted the contested domain name for sale to the general
public.
The sale of domain names
constitutes a bona fide offering of
goods and services where a party such as Respondent is unaware of a complainant’s
rights in a mark.
Complainant has amassed a portfolio
of more 20,000 surname-incorporating domain names, 5,000 of which reflect either
the plural or possessive form of a given surname.
C. Additional Submissions
In its Additional Submission, Complaint further asserts, inter alia, that:
A sophisticated party such as Respondent who regularly registers domain names cannot be willfully blind to whether a particular domain name may violate the trademark rights of another party.
Although Respondent appears to argue that it uses the disputed domain
name only to offer travel information, it in fact uses the domain to sell grain
marketing services, one of Complainant’s main lines of business.
Likewise Respondent uses the contested domain to market pet supplies in
competition with the business of Complainant.
In its Additional Submission, Respondent further asserts, among other
things, that:
In the
Although Complainant has received USPTO
registrations for its mark, those registrations were granted subsequent to Respondent’s
registration of the disputed domain name.
Complainant has failed to demonstrate that the consuming public has developed a sense of brand identity with the mark, and it has thus failed to demonstrate that its mark has any strength as a source indicator.
FINDINGS
(1) the domain name registered by Respondent is
confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate
interests in respect of the domain name; and
(3) the same domain name was registered and is being
used by Respondent in bad faith.
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:
i.
the
domain name registered by the Respondent is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights;
ii.
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
iii.
the domain name
has been registered and is being used in bad faith.
Complainant asserts rights in the CARGILL mark through its registrations of that mark with the United States Patent and Trademark Office. Respondent does not contest the fact of these registrations, but notes that those registrations postdate the registration of the subject domain name. Complainant has also advanced rights to the mark on the basis of the common law. While Complainant’s offer of proof on this point is less than compelling, we are satsified from a review of the record as a whole and on the balance of probabilities that Complainant has made out a satisfactory showing of the existence of such common law rights in the subject mark and that those rights substantially predate the registration of Respondent’s domain name. Complainant has therefore demonstrated sufficient rights in the CARGILL mark under Policy ¶ 4(a)(i). See, e.g., Museum of Science v. Asia Ventures Inc., D2003-0691 (WIPO Oct. 20, 2003), and the numerous panel decisions cited therein.
Complainant also asserts that the <cargills.com> domain name is confusingly similar to Complainant’s CARGILL mark despite the addition to the mark of the letter “s”. We agree. See, e.g., T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)).
Respondent contends, in essence, that the disputed domain name is comprised of a common or generic term. This contention is unavailing under Policy ¶ 4(a)(i), because this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to the mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because a complainant had a trademark registration for its VANCE mark, a respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)). We will, however, return to this topic in the rights-and-interests segment of our analysis immediately following, where it more properly lies.
Similarly, the addition of a
generic top-level domain (“gTLD”) such as “.com” to a registered mark in
forming a domain name does not adequately distinguish the domain name from the
mark. See Jerry Damson, Inc. v.
We therefore find that Complainant
has adequately met its obligations of proof under Policy ¶ 4(a)(i).
Under this heading, Complainant must first make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to show that it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have rights to or legitimate interests in the domain); 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.
From a review of the
Complainant, we are satisfied that Complainant has met its initial burden under
this head of the Policy. We therefore turn to consideration of Respondent’s answers
to the allegations of the Complaint respecting rights and interests.
Respondent first argues that it has rights to and legitimate interests in
the <cargills.com> domain
because the disputed domain is comprised of no more than the plural or
possessive form of a common surname widely used by numerous parties. Granting
that “Cargill” is a common surname, whether Respondent has rights in that name
does not depend upon its status as a surname, but rather upon the use to which
the name is put. This principle is well described in F. Hoffman-La Roche AG v. Domain Admin Tucows.com, D2006-1488 (WIPO
Feb. 27, 2007):
If (as
is incontrovertibly the case) Roche is a surname, the Panel does not think that
a rule can be adopted which depends on how common the surname is.... The real
question is whether the use claimed by the Respondent, whether it is successful
in its commercial plans or not, is sufficient to qualify as a right or
legitimate interest under the Policy.
We proceed then to examine the contentions
of the parties within this framework. In
so doing, we discover, first, that Respondent makes no suggestion that it
operates a vanity e-mail service by means of the contested domain, and, second,
that Complainant contends that Respondent uses the disputed domain to display
third-party click-through links, including advertisements for Complainant’s business
competitors. Complainant also asserts
that Respondent profits from this activity through the receipt of referral or
click-through fees associated with these links and advertisements. Respondent says
in response that it merely makes available on its resolving website travel
information tied to the Cargill name. We find respondent’s argument
unpersuasive. A close examination of Complainant’s submissions in support of
its Complaint demonstrates that Respondent indeed uses the contested domain to
host links to sites competing with the business of Complainant, and Respondent
does not deny that it profits from these links as alleged in the Complaint.
We conclude, therefore, that Respondent is not making a bona fide offering of goods or services via the disputed domain name under Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use of the domain under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
See also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a domain name confusingly similar to a competing mark does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether the links resolve to competing or unrelated websites).
Finally in this connection, we note that Complainant contends that Respondent is not commonly known by the disputed domain name. Respondent does not contest this allegation. Therefore, and because the pertinent WHOIS information reveals that the disputed domain name’s registrant is “RN WebReg c/o RareNames, Inc.”, we conclude that Respondent lacks rights to and legitimate interests in the contested domain name pursuant to Policy ¶ 4(c)(ii). See, e.g., Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003): “Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [disputed <awvacations.com>] domain name.”
Complainant has therefore satisfied the requirements of Policy ¶ 4(a)(ii).
On the question of bad faith registration and use of the disputed domain, we first take note of Complainant’s allegation that Respondent offers to sell the disputed domain name to Internet users. Evidence submitted in support of the Complaint indicates that Respondent’s asking price for the domain is $4,088.00, a price demonstrably in excess of the cost of domain registration. Respondent does not deny that this is its asking price. We therefore conclude that Respondent has offered the disputed domain name for sale in an amount in excess of its registration costs, and that Respondent therefore lacks rights to and legitimate interests in the contested domain name under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that a respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs of domain registration provides evidence that Respondent had no rights to or legitimate interests in a contested domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that a respondent’s conduct in purporting to sell a disputed domain name suggests that it has no legitimate use for the domain).
Respondent objects that it has not offered to sell the contested domain either to Complainant or to Complainant’s competitors, as described in Policy ¶ 4(b)(i). But Respondent does not deny that it has offered to sell the domain to the Internet universe, which necessarily includes both Complainant and its competitors. Respondent’s argument on this score is therefore unavailing.
Complainant also argues that Respondent has by its conduct, as alleged in the Complaint, created a likelihood of confusion as to Complainant’s possible affiliation with or sponsorship of the disputed domain name and resolving website. We agree with this assessment. As a consequence, we find that Respondent has engaged in bad faith registration and use of the disputed domain under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name by using a domain confusingly similar to a complainant’s mark to offer links to third-party websites offering services similar to those offered by that complainant); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of a contested domain name, under Policy ¶ 4(b)(iv), by using the domain to operate a commercial search engine with links to the products of a complainant and to that complainant’s competitors).
Finally under
this head of the Policy, Complainant urges that Respondent had knowledge of
Complainant’s rights in the CARGILL mark at the time of the disputed domain
name’s registration. Respondent,
choosing its words carefully, answers only that it had no prior knowledge of Complainant’s interest in the possessive
and/or plural form of the common surname “Cargill.” In other words, Respondent
does not say that it was unaware of Complainant’s rights in its mark at the
time the domain was registered, but only that Respondent was unaware that Complainant’s
claim to rights in that mark might extend to the addition of the letter “s” to
form a domain name. Respondent’s artful
choice of language ignores the fact that under the Policy the question is not
whether Complainant has rights in a possessive or plural form of its mark, but
whether the formation of a plural or possessive form of the mark creates
confusing similarity between mark and domain within the meaning of the
Policy. As discussed above, in the
circumstances here presented, it does.
We are therefore satisfied that
Respondent, who resides in the same country in which Complainant has plied its trade
prominently for well more than 100 years, had such knowledge, and we therefore
find that Respondent has engaged in bad faith registration and use of the
disputed domain name under Policy ¶ 4(a)(iii).
To
sum up, we think the situation presented by this proceeding is closely parallel
to that found in Gruppo Bussetti S.p.A.
v. Marco Ferro, D2008-1994 (WIPO, Feb. 20, 2009) in which the presiding
panelist recited as follows:
The Complainant is well-known in
As to bad faith use, by
fully incorporating the BUFFETTI Marks into the disputed domain name and by
using the website under such domain name as a parking website, providing links
to direct competitors of the Complainant, the Respondent was, in all
likelihood, trying to divert traffic intended for the Complainant’s website to
its own for the purpose of earning click-through revenues from Internet users
searching for the Complainant’s website. The use and exploitation of trademarks
to obtain click-through revenues from the diversion of Internet users has in
many decisions been found to be use in bad faith under paragraph 4(b)(iv) of
the Policy (see L’Oréal, Biotherm,
Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623, with further references). The Panel is therefore
satisfied that the Respondent has also used the disputed domain name in bad
faith under paragraph 4(b)(iv) of the Policy.
For
all of these reasons, we conclude that Complainant has met its burden of proof
under Policy ¶ 4(a)(iii).
DECISION
Complainant having established all three elements required to be proven
under the ICANN Policy, the Panel concludes that the relief
requested must be GRANTED.
Accordingly, it is Ordered that the <cargills.com>
domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 12, 2009
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