Cargill, Incorporated v. Steven Ford
Claim Number: FA1703001719576
PARTIES
Complainant is Cargill, Incorporated (“Complainant”), represented by Patrick J. Gallagher of Norton Rose Fulbright US LLP, Minnesota, USA. Respondent is Steven Ford (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cargillseedoil.com>, registered with Network Solutions, LLC.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 1, 2017; the Forum received payment on March 1, 2017.
On March 1, 2017, Network Solutions, LLC confirmed by e-mail to the Forum that the <cargillseedoil.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 March 2, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 2017 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@cargillseedoil.com. Also on March 2, 2017, 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 March 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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
Complainant, Cargill, Inc., is a major agricultural, financial and industrial service provider based in Wayzata, Minnesota. In connection with this business, Complainant uses the CARGILL marks to promote its goods and services. Complainant has rights in the CARGILL mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,121,096 registered July 25, 2006). Respondent’s domain name, <cargillseedoil.com>, is identical or confusingly similar to Complainant’s mark in its entirety and merely adds the generic term “seed oil” as well as the generic top level domain (“gTLD”) “.com”.
Respondent has no rights or legitimate interests in the <cargillseedoil.com> domain name. Respondent is not commonly known by the disputed domain name and has failed to use the disputed domain name for a bona fide offering of goods or services or a legitimate non-commercial or fair use. Rather, the domain name resolves to Respondent’s own competing page for Respondent’s pecuniary gain.
Respondent should be considered to have registered and used <cargillseedoil.com> in bad faith. Respondent utilizes Complainant’s mark in the disputed domain name to divert visitors to Respondent’s web site. Respondent’s web site utilizes the domain name to offer similar products that compete with Complainant’s business. Respondent had actual or at least constructive knowledge of Complainant’s rights in the CARGILL mark at the time of the registration of <cargillseedoil.com>.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set for the below, the Panel finds Complainant is entitled to the requested relief of transfer of the <cargillseedoil.com>, domain name.
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.
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 claims rights in the CARGILL mark based upon registration with the USPTO (e.g., Reg. No. 3,121,096 registered July 25, 2006). Registration with the USPTO is sufficient to establish rights within the mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel finds that Complainant has rights in the CARGILL mark based upon its registration with the USPTO.
Respondent’s domain name, <cargillseedoil.com>, is confusingly similar to Complainant’s mark as it contains the mark in its entirety and merely adds the generic term “seed oil” as well at the gTLD “.com.” Added gTLDs are irrelevant for a Policy ¶ 4(a)(i) analysis for confusing similarity, and the addition of generic terms likewise does not distinguish a domain name from a 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). The Panel finds that the disputed domain name is confusingly similar to the CARGILL mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
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.”).
Complainant argues that Respondent has no rights or legitimate interests in <cargillseedoil.com> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the CARGILL mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record identifies Respondent as “Perfect Privacy, LLC”. Additionally, lack of evidence within the record to indicate that Respondent had been authorized to register a domain name using Complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant contends that Respondent’s failure to use <cargillseedoil.com> in connection with a bona fide offering of goods or services or for legitimate non-commercial or fair use further evidences his lack of rights or legitimate interests in the disputed domain name. The disputed domain name resolves to a website that offers the sale of goods that compete with Complainant’s business in an attempt to divert customers. Use of a confusingly similar domain name to divert Internet users to a website that competes with a Complainant’s business is not a use demonstrating rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use). The Panel finds under Policy ¶¶ 4(c)(i) or (iii) that Respondent has not established any rights or legitimate interests.
Complainant has proved this element.
Complainant argues that Respondent is utilizing <cargillseedoil.com> in bad faith by diverting users to Respondent’s own site that offers competing goods and services. Use of a resolving website to divert and compete with Complainant’s business can be evidence of bad faith pursuant to Policy ¶ 4(b) (iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). The disputed domain name resolves to a webpage which offers goods and services that compete with Complainant’s business. Therefore, the Panel finds Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cargillseedoil.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: March 31, 2017
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