Cargill, Incorporated v. Dan P
Claim Number: FA1202001429444
Complainant is Cargill, Incorporated (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Dan P (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cargill.ag> (“the Domain Name”), registered with GoDaddy.com, Inc.
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.
Clive L. Elliott as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 13, 2012; the National Arbitration Forum received payment on February 13, 2012.
On February 14, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the Domain Name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 February 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 2012 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@cargill.ag. Also on February 15, 2012, 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.
A timely Response was received and determined to be complete on February 16, 2012.
Complainant submitted an Additional Submission that was received and determined to be compliant on February 17, 2012.
On February 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Clive Elliott as Panelist.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts that it owns several United States trademark registrations for the mark CARGILL in connection with:
(a) the sale of food and food products;
(b) the sale of animal nutrition and animal nutrition related products; and
(c) a line of financial services, including "risk management."
Complainant advises that it owns trademark registrations that are derivatives of the CARGILL mark, including for the mark CARGILL DRY GEL (used in connection with food additives for non-nutritional purposes and natural sweeteners) and for the mark CARGILL GEL (used in connection with food starches).
Complainant further advises that it owns numerous other registrations for the mark CARGILL, derivatives of the mark CARGILL, common law rights in the mark CARGILL, and hundreds of international registrations for the mark CARGILL, including the mark CARGILL in Antigua.
Collectively, Cargill's CARGILL trademarks will be referred to as the "CARGILL Marks."
Complainant states that Cargill Incorporated is an international provider of food, agricultural, financial and industrial products and services. Cargill maintains four major business segments under the brand CARGILL, including agricultural services, food ingredients and applications, risk management and financial, and industrial.
Complainant asserts that it has extensively used and advertised the CARGILL brand in association with a wide range of products and services dating back to at least as early as 1865 and submits that the CARGILL trademark and trade name are highly regarded, representing valuable goodwill to Complainant.
Complainant contends that it has invested millions of dollars developing and marketing its business under the CARGILL brand and that it has also invested substantial time, money and effort in creating, marketing, and maintaining its website located at <cargill.com>. Complainant believes that as a result of the extensive promotion of the CARGILL brand and trade name, Cargill has developed substantial goodwill and customer loyalty under this trademark. Complainant asserts that as a result CARGILL is a distinctive, widely recognized trademark.
Complainant notes that Respondent registered the Domain Name on December 29, 2011 and asserts that Respondent has no statutory or common law trademark rights or any other right or legitimate interest to the mark CARGILL or in the Domain Name.
Complainant contends that Respondent has registered and used the Domain Name in bad faith and there is no evidence the Domain Name was registered for a legitimate reason. Complainant suggests that the Domain Name was registered in bad faith for the purpose of commercial gain by using the Domain Name to forward to a third party website <monsanto.ag>. Complainant asserts that Respondent has no legitimate interest in the Domain Name and that Respondent's continued trafficking of the Domain Name without Complainant’s permission is evidence of bad faith.
Complainant asserts that the Domain Name contains its entire CARGILL mark, is confusingly similar to the CARGILL mark and that the addition of a top level domain to a mark is not a distinguishing feature.
Complainant submits that respondent does not have any right or legitimate interest in <cargill.ag>, and the registration of a domain name for the purpose of redirecting Internet users interested in another's products is not a bona fide offering of goods. Complainant also submits that Respondent has no legitimate right to the name in that it has not received permission to use the mark. Furthermore, it is contended Respondent is not using the mark for legitimate noncommercial or fair use because Respondent forwards users who seek the domain name <cargill.ag> to a website located at <monsanto.ag>, which Respondent owns.
Complainant also contends that Respondent has no legitimate rights in that the Domain Name does not refer to Respondent, Respondent is not commonly known by the mark and has not received permission from Cargill to use the mark.
Complainant submits that Respondent's use of CARGILL in the Domain Name misappropriates Cargill's goodwill and cheats consumers into clicking on Respondent's website when they think they will see information regarding Cargill and its CARGILL brand products.
Complainant asserts that Respondent's registration of a domain name in association with Cargill's CARGILL mark shows the registration was in bad faith and that Respondent would have had constructive knowledge of Cargill's trademark rights at the time of registering the Domain Name. Further, it is submitted that regardless of actual knowledge, Respondent should have conducted a trademark search prior to the registration of the Domain Name. Complainant contends that Respondent has registered the Domain Name in bad faith and that it infringes on Complainant’s rights and takes advantage of Complainant’s goodwill. Further evidence of bad faith registration is said to be shown by Respondent's diversion of traffic to another one of its websites and failure to make active use of the Domain Name.
B. Respondent
Respondent contends that the Domain Name is not easily confused with the brand of Cargill and states that when developed, the logo and font will be completely different and will bear no resemblance to the trademark of Complainant.
Respondent asserts that the Domain Name will be an information source for farmers wishing to learn about ecoagriculture and sustainable farming methods. It asserts that there is no financial gain or intent of financial gain and submits that the .ag top level domain is appropriate for a clearinghouse of sustainable agricultural knowledge.
Respondent argues that Complainant's complaint that Respondent has acted for financial gain is false and groundless and states that it has no plans to sell any products, goods, services or advertising of any form. Respondent further asserts that it only seeks to educate farmers about alternatives to agri-industrialization.
Respondent asserts that the Domain Name was not registered nor has it been used in bad faith. It further claims that millions of small-scale farmers around the world deserve to have free access to ideas around sustainable agriculture and resilient, traditional seeds, and this shows the registration has been done in good faith.
C. Additional Submissions
Complainant notes that Respondent incorrectly contends the Domain Name “is not easily confused with the brand of Cargill” because “when developed, the logo and font will be completely different.” Complainant submits that Respondent’s contentions have no relevance under the Policy, as the Policy looks only to whether Complainant has a protected mark and if the disputed domain name is identical to or confusingly similar to that mark. Complainant contends that Respondent’s development of a logo is not relevant and regardless of the logo, the Domain Name will still be <cargill.ag>, which is identical to Cargill’s CARGILL mark.
Complainant asserts that Respondent has not met its burden of showing it has legitimate rights to the Domain Name and that Respondent’s alleged future plans to use the Domain Name in connection with services similar to Cargill’s own services fail to overcome the lack of legitimate rights. Complainant submits that Respondent’s future use has no relevance to Respondent’s rights to use the Domain Name and notes that Respondent put forth no actual business plans regarding its plans to be an “information source for farmers wishing to learn about eco-agriculture and sustainable farming methods.” Complainant suggests that Respondent’s failure to put forth any evidence cannot overcome the prima facie case of no legitimate rights.
Complainant further submits that Respondent’s purported plans would directly conflict with Cargill’s existing trademark rights to use the CARGILL mark in connection with the services Respondent claims it will offer. Complainant notes that Respondent claims it plans to use the Domain Name in connection with eco-agriculture and sustainable farming methods, which Complainant states are the same services it offers under its CARGILL mark. Complainant states that Respondent does not have the right to compete against Cargill using Cargill’s own mark.
Complainant notes that Respondent does not dispute it knew of Cargill when it registered the Domain Name and suggests that the evidence shows Respondent registered the Domain Name because it was associated with the CARGILL mark and the goodwill associated with that mark. Complainant submits that that bad faith registration is confirmed by the fact Respondent also registered the monsanto.ag domain name, which infringes on the MONSANTO trademark, and that registration of multiple domain names that infringe on third party rights shows bad faith.
For the reasons set out below the Panel concludes that Complainant has established all three elements required under the ICANN Policy and accordingly that relief should be granted and the Domain Name transferred to Complainant.
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.
Identical and/or Confusingly Similar
Complainant contends that it has rights in the CARGILL mark. Complainant has provided the Panel with evidence of its trademark registration for, inter alia, the CARGILL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 880,991 registered November 18, 1969). The Panel finds that Complainant has rights in the CARGILL mark pursuant to Policy ¶ 4(a)(i).
Complainant points out that the Domain Name is identical to Complainant’s CARGILL mark. The Panel notes that Respondent fully incorporates Complainant’s mark and merely adds the county-code top-level domain (“ccTLD”) “.ag” to create the Domain Name. This is quite insufficient to distinguish the Domain Name from the CARGILL mark.
In its Additional Submission, Complainant responds to Respondent’s contentions that the future logo and font of the Domain Name indicate that the said Domain Name will not be easily confused with Complainant’s mark. Complainant asserts in its Additional Submission that these contentions are irrelevant under Policy ¶ 4(a)(i), as is any development of a logo by Respondent. The Panel agrees and has no difficulty in finding that the Domain Name is identical to Complainant’s CARGILL mark under Policy ¶ 4(a)(i).
Rights and Legitimate Interests
Complainant alleges that Respondent has not received permission or been licensed to use the CARGILL mark in any way. Complainant contends that there is no evidence that Respondent is commonly known by the CARGILL mark or the Domain Name. The Panel notes that the WHOIS information for the Domain Name identifies the registrant as “Dan P”. This does not suggest any nominal affiliation with the Domain Name. The Panel infers that Respondent is not commonly known by the Domain Name and thus lacks rights and legitimate interests according to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant contends that the Domain Name resolves to another website located at the <monsanto.ag> domain name, which is also controlled by Respondent and completely unaffiliated with Complainant. Complainant also asserts that the website to which the Domain Name resolves at <monsanto.ag> refers to Complainant’s competitor and displays links to a third-party website offering services in competition with Complainant. The Panel concludes that using the Domain Name to redirect consumers to a website unaffiliated but competing with Complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and ¶ 4(c)(iii). The Panel therefore finds that this use of the Domain Name does not constitute 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).
The Panel also concludes that Respondent’s stated intention to use the Domain Name to provide information about agriculture and sustainable farming does not establish rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). That is, particularly as such a use competes with Complainant and involves directing consumers to another website located at the <monsanto.ag> domain name, when the very well-known company operating under and by that name seems to have little or nothing to do with the website in question. Indeed, it is difficult to see how this could be characterised as any form of bona fide offering of goods or services.
Registration and Use in Bad Faith
As noted above, it is asserted that Respondent uses the Domain Name to redirect consumers to the website located at the <monsanto.ag> domain name, which is owned and operated by Respondent and provides information about Complainant’s competitor, Monsanto, and displays a listing of pay-per-click links to competitors of Complainant. Complainant also asserts that Respondent does not make an active use of the Domain Name because it only diverts consumers to another website located at a different domain name and the resolving website shows a message stating that “Our web platform is in development.”
The Panel finds that this is not an inactive use as the resolving website advertises and provides resources relating to Monsanto, a competitor of Complainant, and other competitors.
Complainant also argues in its Additional Submission that Respondent’s intended use of the Domain Name is to compete with Complainant by offering the same services Complainant already offers on its own website. The Panel determines that diverting consumers via the Domain Name to a website relating to a competitor—whether the current Monsanto website or the intended future website as described by Respondent—disrupts Complainant’s business, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website). That, in itself, is sufficient to determine this ground in favour of Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cargill.ag> Domain Name be TRANSFERRED from Respondent to Complainant.
Clive Elliott, Panelist
Dated: March 6, 2012
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