Monsanto Company and Monsanto Technology LLC v. Juaquin Perez
Claim Number: FA1212001476061
Complainant is Monsanto Company and Monsanto Technology LLC (“Complain-ant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Re-spondent is Juaquin Perez (“Respondent”), Colombia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <monsantocorporation.com>, registered with INSTRA CORPORATION PTY, LTD.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on December 14, 2012; the National Arbitration Forum received payment on December 17, 2012.
On December 27, 2012, INSTRA CORPORATION PTY, LTD. confirmed by e-mail to the National Arbitration Forum that the <monsantocorporation.com> domain name is registered with INSTRA CORPORATION PTY, LTD. and that Respondent is the current registrant of the name. INSTRA CORPORATION PTY, LTD. has verified that Respondent is bound by the INSTRA CORPORA-TION PTY, LTD. 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 December 31, 2012, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of January 22, 2013 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, adminis-trative, and billing contacts, and to postmaster@monsantocorporation.com. Also on December 31, 2012, the Written Notice of the Complaint, notifying Respond-ent of the e-mail addresses served and the deadline for a Response, was trans-mitted to Respondent via post and fax, to all entities and persons listed on Re-spondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 28, 2013, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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" through submission of Electronic and Written Not-ices, as defined in Rule 1 and Rule 2. 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
Complainant markets agriculture products to farmers around the world under the MONSANTO trademark.
Complainant has registered the MONSANTO mark in many jurisdictions, including with Colombia’s Superintendent of Industry and Commerce (“CSIC”) (Reg. No. 169,784, registered November 29, 1994).
Respondent registered the <monsantocorporation.com> domain name on October 11, 2012.
The <monsantocorporation.com> domain name is confusingly similar to Complainant’s MONSANTO mark.
Respondent has never been commonly known by the disputed domain name.
Complainant has not given Respondent any license or other permission by which Respondent could make any use of Complainant’s MONSANTO mark.
Respondent has neither any rights to nor any legitimate interests in the contested domain name.
Respondent uses the disputed domain to publicly resolve to an inactive website.
Respondent knew of Complainant and its rights in the MONSANTO mark when it registered the disputed domain name.
Respondent both registered and uses the contested domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(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.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. 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.
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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the MONSANTO trademark for purposes of Policy ¶ 4(a)(i) by reason if its registration of the mark with a national trademark authority, the CSIC. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a national trademark registration adequately demonstrates a UDRP complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Turning to the central question arising under Policy ¶ 4(a)(i), we conclude from a review of the record that the <monsantocorporation.com> domain name is confusingly similar to Complainant’s MONSANTO trademark. The domain name wholly incorporates Complainant’s mark, adding only the generic term “corporation” and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not distinguish the domain name from the mark under the standards of the Policy. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case,” and thus Policy ¶ 4(a)(i) is satisfied).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make 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 such rights or interests); 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 has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the allegations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Complaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the contested domain name, and that Complainant has not given Respondent any license or other authorization by which Respondent could make use of its MONSANTO mark. Moreover, the WHOIS information for the <monsantocorporation.com> domain name ident-ifies the domain name registrant only as “Juaquin Perez,” which does not resem-ble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in the domain name within the meaning of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (con-cluding that a respondent was not commonly known by the <lilpunk.com> domain name, and so had failed to show that it had rights to or legitimate interests in that domain name as contemplated in Policy ¶ 4(c)(ii) where there was no evidence in the record showing that that respondent was commonly known by that domain name, and where a UDRP complainant asserted that it did not license or other-wise authorize that respondent’s use of its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the disputed domain name to resolve to a website that is publicly inactive. It is well established that in circumstances such as are here presented, inactive use of a domain name which is confusingly similar to the mark of another is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that a respondent had no rights to or legitimate interests in a do-main name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of that domain name).
The Panel therefore finds that Complainant has satisfied the requirements of Pol-icy ¶ 4(a)(ii).
We are persuaded from the evidence that Respondent knew of Complainant and its rights in the MONSANTO trademark when Respondent registered the disputed <monsantocorporation.com> domain name. This stands as evidence that Respondent registered the domain name in bad faith. See Minicards Vennoot-schap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that a respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
We are also convinced from the evidence that, in the prevailing circumstances, Respondent’s inactive holding of the domain name demonstrates bad faith in its registration and use under Policy ¶ 4(a)(iii). See, for example, Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that a UDRP respondent’s failure to make active use of a disputed domain name in the period following its registration indicated that that respondent registered the do-main name in bad faith).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <monsantocorporation.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 12, 2013
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