Cargill, Incorporated v. David MacLennan / Cargill
Claim Number: FA1803001777739
Complainant is Cargill, Incorporated (“Complainant”), represented by Patrick J. Gallagher of Cozen O'Connor, Minnesota. Respondent is David MacLennan / Cargill (“Respondent”), Minnesota.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cargillincorp.com>, registered with Google LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.
Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically March 19, 2018; the Forum received payment March 19, 2018.
On March 20, 2018, Google LLC confirmed by e-mail to the Forum that the <cargillincorp.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC verified that Respondent is bound by the Google LLC registration agreement and 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 21, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 2018, 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@cargillincorp.com. Also on March 21, 2018, 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 April 11, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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’s Allegations in this Proceeding:
Complainant, Cargill, Inc., is a provider of food, agricultural, financial, and industrial products. Complainant uses the CARGILL mark to advertise and promote its business around the world and has rights in the CARGILL mark based upon registration with trademark agencies throughout the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 880,665, registered Nov. 11, 1969). See Compl. Ex. A. Respondent’s <cargillincorp.com> domain name is identical or confusingly similar to the CARGILL mark, as the name incorporates the mark in its entirety, merely differing through the addition of the generic term “incorp” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <cargillincorp.com> domain name. Respondent is not commonly known by the disputed domain name, despite listing the name of Complainant’s Chief Executive Officer as the registrant of the domain name. Additionally, Complainant has not authorized or licensed Respondent to use the CARGILL mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the domain name does not resolve to an active website. See Compl. Ex. D.
Respondent registered and is passively holding the <cargillincorp.com> domain name in bad faith. Respondent also used false information, namely that of Complainant’s CEO and business address, when it registered the name. Further, it is clear Respondent had actual knowledge of Complainant and its rights in the CARGILL mark at the time it registered and subsequently passively held the domain name.
B. Respondent’s Allegations in this Proceeding:
Respondent did not submit a Response in this proceeding. The Panel notes that Respondent registered the disputed domain name March 1, 2018.
Complainant established that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name that Respondent registered.
Respondent has no such rights to or legitimate interests in the mark or disputed domain name that contains in its entirety Complainant’s protected mark.
Respondent registered a disputed domain name containing Complainant’s protected
mark that is confusingly similar to the mark.
Respondent registered and is passively holding the disputed domain name containing Complainant’s protected mark in its entirety and did so 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”)
Identical or Confusingly Similar:
Complainant established rights in the CARGILL mark based upon registration of the mark with the USPTO (e.g., Reg. No. 880,665, registered Nov. 11, 1969). See Compl. Ex. A. Registration of a mark with the USPTO is sufficient to establish rights in that mark under the Policy. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel finds that Complainant’s registration of the CARGILL mark with the USPTO establishes rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <cargillincorp.com> domain name is confusingly similar to the CARGILL mark, as the name consists of the mark in its entirety plus the added term “incorp” and the “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). The Panel finds that the <cargillincorp.com> domain name is confusingly similar to the CARGILL mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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), then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <cargillincorp.com> domain name, as Respondent is not commonly known by the disputed domain name and that Complainant has never authorized Respondent to use the CARGILL mark in any way. Where no response is filed, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name, even when the registrant appears to be associated with the complainant. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”); see also Warner Bros. Entertainment Inc. v. David Haddad / Warner Bros, FA 1736053 (Forum July 17, 2017) (finding Respondent to not be commonly known by the disputed domain name when it used the complainant’s business name and the name of the complainant’s senior executive in order to register the disputed domain name). The WHOIS information of record identifies the registrant of the at-issue domain name as “David MacLennan / Cargill.” Complainant notes this is the name of Complainant’s CEO, but that the domain name was not registered by MacLennan or on his behalf. No information in the record indicates that Complainant authorized Respondent to register any domain name incorporating Complainant’s mark. The Panel finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <cargillincorp.com> domain name.
Complainant also asserts Respondent’s inactive holding of the <cargillincorp.com> domain name indicates that Respondent does not have rights or legitimate interests in the name. Inactive holding of a domain name does not demonstrate rights or legitimate interests in the name pursuant to Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Complainant contends Respondent’s domain name resolves only to a parked webpage that displays an error message. See Compl. Ex. D. The Panel therefore finds that Respondent does not have rights or legitimate interests in the domain name pursuant to Policy ¶¶ 4(c)(i) or (iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interest in the disputed domain name or Complainant’s protected mark, which is contained in its entirety within the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant does not argue any of the factors of bad faith under Policy ¶ 4(b). However, past panels have held that the factors in Policy ¶ 4(b) are non-exclusive, and that bad faith can be determined from a “totality of the circumstances” under Policy ¶ 4(a)(iii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”). Accordingly, the Panel looks to arguments beyond Policy ¶ 4(b) and within the totality of the evidence for bad faith.
Complainant asserts that Respondent’s failure to use the <cargillincorp.com> domain name is evidence of its bad faith. Inactive holding of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii). 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).”). The Panel recalls Complainant’s contention that the domain name does not resolve to an active website. See Compl. Ex. D. The Panel finds Respondent’s inactive holding of the domain name evidences Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).
Further, Complainant contends Respondent provided false contact information in connection with the registration of the <cargillincorp.com> domain name. Use of false contact information in registering a domain name can be evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See Farouk Systems, Inc. v. Jack King / SLB, FA1505001618704 (Forum June 19, 2015) (finding bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where the respondent had provided false contact information when registering the disputed domain name). Complainant claims that in registering the domain name, Respondent used the name of its CEO, David MacLennan, as the registrant’s name; “Cargill” as the registrant’s organization and “15407 McGinty Rd” as registrant’s address. See Compl. Ex. D. Complainant claims the address listed is the correct address for its own corporate headquarters. The Panel finds that Respondent registered the disputed domain name with false contact information and this evidence supports findings of bad faith registration under a Policy ¶ 4(a)(iii) analysis.
Complainant also contends that in light of the fame and notoriety of Complainant's CARGILL mark, it is inconceivable that Respondent could have registered the <cargillincorp.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel finds that arguments of bad faith based on constructive notice are irrelevant because UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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."). The Panel agrees with Complainant, however, that Respondent has shown actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge supports findings of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant further asserts that Respondent’s registration of the domain name using information related to Complainant indicates it had actual knowledge of Complainant’s rights. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the name in bad faith.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and passively held the disputed
domain name in bad faith; Complainant satisfied the elements of ICANN 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 <cargillincorp.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 23, 2018
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