Cargill, Incorporated v. Jean Francois Ferrachat
Claim Number: FA1606001679655
Complainant is Cargill, Incorporated (“Complainant”), represented by Patrick J. Gallagher of Norton Rose Fulbright US LLP, Minnesota, USA. Respondent is Jean Francois Ferrachat (“Respondent”), represented by Antoine Ferrachat, Alpes-de-Haute-Provence, France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cargill-treasury.com>, registered with REGISTER.IT SPA.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 15, 2016; the Forum received payment on June 15, 2016.
On June 17, 2016, REGISTER.IT SPA confirmed by e-mail to the Forum that the <cargill-treasury.com> domain name is registered with REGISTER.IT SPA and that Respondent is the current registrant of the name. REGISTER.IT SPA has verified that Respondent is bound by the REGISTER.IT SPA 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 June 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 2016 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-treasury.com. Also on June 22, 2016, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Notices, 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 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:
1. Complainant offers food, agriculture, financial and industrial products and services in the United States and internationally under the CARGILL mark. Complainant owns the CARGILL mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 880,665, registered Nov. 11, 1969). Respondent’s <cargill-treasury.com> domain name is confusingly similar to Complainant’s mark because it incorporates the entire mark with the addition of a hyphen, the generic term “treasury,” and the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the <cargill-treasury.com> domain name. Respondent is not commonly known by the disputed domain name. Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <cargill-treasury.com> domain name. Rather, the domain name resolves to a blank website. See Compl., at Attached Ex. D.
3. Respondent had constructive or actual knowledge of Complainant's rights in the mark at the time the domain was registered. Respondent’s inactive holding of the domain and the resolving website constitute bad faith registration and use under Policy ¶ 4(a)(iii).
B. Respondent:
1. Respondent did not submit a response for consideration in this proceeding.
1. Respondent’s <cargill-treasury.com> domain name is confusingly similar to Complainant’s CARGILL mark.
2. Respondent does not have any rights or legitimate interests in the <cargill-treasury.com> domain name.
3. Respondent registered or used the <cargill-treasury.com> domain name in bad faith.
Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the French language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, filing of a trademark registration with an entity which evinces an understanding of the English language, and any evidence (or lack thereof) evincing Respondent’s understanding of the French language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the French language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). Complainant argues the disputed domain name contains the English word “TREASURY” and is targeted at Complainant, a company headquartered in the United States. Additionally, Respondent has registered several other domain names where the Respondent has combined a well-known company name with the English word “TREASURY,” suggesting that Respondent is able to converse in English. See Exhibit E. Furthermore, the disputed domain name contains the “.com” gTLD, the largest top-level domain, often used by international entities for international websites. Since this dispute involves international parties, Complainant asserts English should be used as the language of the proceedings.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
DISCUSSION
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.
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(f), 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 (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.”).
Complainant offers food, agriculture, financial and industrial products and services in the United States and internationally under the CARGILL mark. Complainant claims ownership of the CARGILL mark through its registration of the mark with the USPTO (e.g., Reg. No. 880,665, registered Nov.11, 1969). See Compl., at Ex. A. Panels have held that registration with the USPTO establishes a complainant’s rights in a mark under Policy ¶ 4(a)(i), even where a respondent resides in a different country. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Accordingly, the Panel finds that Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <cargill-treasury.com> domain name is confusingly similar to Complainant’s mark because it incorporates the entire mark with the addition of a hyphen, the generic term “treasury,” and the gTLD “.com.” The additions of a hyphen and a top-level domain have been held irrelevant in differentiating a disputed domain name from a mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Further, the addition of generic words to a mark, where the mark remains the salient feature of a disputed domain name, does not distinguish a respondent’s domain from a complainant’s mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Therefore, the <cargill-treasury.com> domain name is held to be confusingly similar to the CARGILL mark under 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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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.”).
It is Complainant’s position that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant alleges that Respondent is not commonly known by the disputed domain name, and that Respondent has not been licensed or authorized to use the CARGILL mark. The Panel notes that “Jean Francois Ferrachat” is listed as the registrant of the disputed domain name. The Panel recalls that Respondent has not submitted any evidence to rebut Complainants positions. The Panel concludes, in light of the available evidence, that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Y Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Further, Complainant argues that Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <cargill-treasury.com> domain name. Rather, Complainant contends that the domain name resolves to a blank page. See Compl., at Attached Ex. D. Panels have found that the inactive holding of domain names does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Forum Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint). Therefore, the Panel agrees that Respondent’s use of the <cargill-treasury.com> domain constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that while Complainant has not made arguments under Policy ¶ 4(b), such arguments are not mandatory under the Policy, so long as Complainant shows bad faith registration and use in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant asserts that its trademark registrations for the CARGILL mark existed well before the registration of the disputed domain name. Complainant argues that Respondent had constructive knowledge of Complainant's rights in the mark at the time the disputed domain was registered. Complainant further asserts that Respondent had actual notice of Complainant’s rights in its mark prior to registering the domain name because Respondent included the entire mark in the domain name. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant also contends that Respondent’s inactive holding of the disputed domain name and the resolving website constitute bad faith registration and use under Policy ¶ 4(a)(iii). Complainant claims that the domain name resolves to a blank website. See Compl., at Attached Ex. D. Panels have found inactive holding of a disputed domain name to qualify as bad faith registration and use. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Therefore, the Panel finds that Respondent’s inactive holding of the disputed domain name constitutes bad faith registration and use under 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 <cargill-treasury.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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