Freeport-McMoran Inc. v. Francis Broaddus
Claim Number: FA1808001802565
Complainant is Freeport-McMoran Inc. (“Complainant”), represented by Chantal Z. Hwang of Cooley LLP, California, USA. Respondent is Francis Broaddus (“Respondent”), Oklahoma, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <freeportmcmoranlng.com>, <freeportmcmoranlng.info>, <freeportmcmoranlng.net>, <freeportmcmoranlng.org>, <mainpassfreeportmcmoran.com>, <mainpassfreeportmcmoran.info>, <mainpassfreeportmcmoran.net>, <mainpassfreeportmcmoran.org>, <mainpassfreeportmcmoranlng.com>, <mainpassfreeportmcmoranlng.info>, <mainpassfreeportmcmoranlng.net>, <mainpassfreeportmcmoranlng.org>, <freeportlngexport.info>, and <freeportlngexport.org>, registered with Godaddy.Com, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 21, 2018; the Forum received payment on August 21, 2018.
On August 22, 2018, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <freeportmcmoranlng.com>, <freeportmcmoranlng.info>, <freeportmcmoranlng.net>, <freeportmcmoranlng.org>, <mainpassfreeportmcmoran.com>, <mainpassfreeportmcmoran.info>, <mainpassfreeportmcmoran.net>, <mainpassfreeportmcmoran.org>, <mainpassfreeportmcmoranlng.com>, <mainpassfreeportmcmoranlng.info>, <mainpassfreeportmcmoranlng.net>, <mainpassfreeportmcmoranlng.org>, <freeportlngexport.info>, and <freeportlngexport.org> domain names are registered with Godaddy.Com, Llc and that Respondent is the current registrant of the names. Godaddy.Com, Llc has verified that Respondent is bound by the Godaddy.Com, 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 August 23, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 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@freeportmcmoranlng.com, postmaster@freeportmcmoranlng.info, postmaster@freeportmcmoranlng.net, postmaster@freeportmcmoranlng.org, postmaster@mainpassfreeportmcmoran.com, postmaster@mainpassfreeportmcmoran.info, postmaster@mainpassfreeportmcmoran.net, postmaster@mainpassfreeportmcmoran.org, postmaster@mainpassfreeportmcmoranlng.com, postmaster@mainpassfreeportmcmoranlng.info, postmaster@mainpassfreeportmcmoranlng.net, postmaster@mainpassfreeportmcmoranlng.org, postmaster@freeportlngexport.info, and postmaster@freeportlngexport.org. Also on August 23, 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 September 17, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant has, since 1988, continuously used the FREEPORT-MCMORAN name in the United States and internationally in connection with mineral, oil, and gas exploration services. Complainant through its subsidiary companies, has rights in the FREEPORT-MCMORAN brand, including rights secured through more than three decades of use in the United States and internationally. In addition, Complainant owns several trademark registrations for the FREEPORT COBALT mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s infringing domain names are identical or confusingly similar to one or both of Complainant’s marks as they add non-distinctive terms such as “lng,” “main,” “pass,” and “export.” In addition, some of the domain names eliminate the MCMORAN portion of Complainant’s FREEPORT-MCMORAN mark while adding the term “lng.”
Respondent has no rights or legitimate interests in the infringing domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent has made no attempt to develop the resolving webpages of these domains for any genuine use as each of them merely resolves to a registrar parking page with a notice stating that it is for sale at auction.
Respondent registered and uses the disputed domain names in bad faith. Respondent has listed each of the domain names for sale for $5,000 via auction, a figure that is well in excess of its out-of-pocket costs for each of the domain names. Further, Respondent has not made any legitimate, active use of the resolving webpages associated with the disputed domain names. Moreover, Respondent clearly had knowledge of Complainant’s rights in the FREEPORT-MCMORAN and FREEPORT-COBALT marks prior to registering the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) each of the domain names registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the same domain names were registered and are 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:
(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 its FREEPORT COBALT mark based on its registration of that mark with the USPTO. The Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“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).”). Accordingly, the Panel finds that Complainant has established rights in the FREEPORT COBALT mark for the purposes of Policy ¶ 4(a)(i).
Complainant also claims common law rights in the FREEPORT-MCMORAN mark. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant claims it is a leading international mining company that is the world’s largest publicly traded copper producer and owner of one of the world’s largest copper and gold deposits, with significant mining operations in North and South America. In addition, Complainant avers that it works closely with various environmental and conservation organizations and has been honored with several awards for its habitat and conservation education activities. Based upon a review of Complainant’s <www.fcx.com> website and other evidence, the Panel is satisfied that that Complainant has sufficient trademark rights in its FREEPORT-MCMORAN trademark for the threshold nature of Policy ¶4(a)(i).
Complainant next argues that each of Respondent’s infringing domain names is confusingly similar to Complainant’s mark as each one adds non-distinctive terms such as “lng,” “main,” “pass,” and “export.” In addition, some of the domain names eliminate the MCMORAN portion of Complainant’s mark while adding the term “lng” (the Panel assumes these letters stand for “liquefied natural gas” and thus relate to Complainant’s industry). Further, the addition of a generic top-level domain (“gTLD”) fails to sufficiently distinguish the domain names for the purposes of Policy ¶4(a)(i). 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.); see also The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum June 3, 2015) (finding confusing similarity where the <proscloset.com> domain name merely omitted the first term (“the”) from Complainant’s THE PROS CLOSET mark, eliminated spacing between words, and added the “.com” gTLD).
Finally, the Panel finds relevant the fact that Respondent registered a cluster of domain names, each of which incorporates some element of Complainant’s marks. This indicates that confusing similarity was Respondent’s goal for each of the domain names. The Panel is of the opinion that Respondent’s own obvious intention for these domain names is good evidence that its objective to confuse was, in fact, met.
The Panel therefore finds that the at-issue domain names are confusingly similar to the FREEPORT-MCMORAN and FREEPORT COBALT marks 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). Should it succeed in this effort, the burden then shifts to Respondent to show it does have 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 out 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 contends that Respondent has no rights or legitimate interests in the disputed domain names. It is asserted that Respondent has made no attempt to develop the resolving webpages of these domains for any genuine use. Failure to make active use of a confusingly similar domain name can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the resolving webpages associated with the domain names, all of which consist of registrar parking pages that also list auctions in an attempt to sell the domain names. Accordingly, the Panel finds that Respondent fails to actively use the disputed domain names and thus fails to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Further, Complainant asserts that Respondent is not commonly known by any of the disputed domain names per Policy ¶ 4(c)(ii). Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS records identify “Francis Broaddus” as the registrant for all of the disputed domain names. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the FREEPORT-MCMORAN or the FREEPORT COBALT marks or by any of the disputed domain names and Respondent makes to submission to contest this point. Further, Complainant has never given Respondent permission to use the marks in any manner. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Accordingly, the Panel agrees that Respondent is not commonly known by the at-issue domain names under Policy ¶ 4(c)(ii).
In light of the evidence presented and in the absence of any response, evidence, or other submission by Respondent, the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain names under Policy ¶¶ 4(a)(ii).
Complainant claims that Respondent had actual knowledge of Complainant’s rights in the FREEPORT-MCMORAN and FREEPORT COBALT marks at the time of registering the infringing domain names. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that the unique qualities of the FREEPORT-MCMORAN and FREEPORT COBALT marks, which were adopted by Complainant well prior to the registration of the domain names, make it extremely unlikely that Respondent created the domain names independently. The Panel agrees with Complainant and finds it more likely than not that Respondent did have actual knowledge of Complainant’s mark at the time the disputed domain names were registered.
Next, Complainant claims that Respondent has listed each of the domain names for sale at a price of US$5,000 via auction, a figure that is well in excess of its out-of-pocket costs for each of the domain names. Offering a confusingly similar domain name for sale can evince bad faith registration under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). On the screenshots provided by Complainant, each of the domain names’ resolving webpages display the messages “This domain is available through GoDaddy Auctions” and “Price: $5,000.00”. Accordingly, the Panel finds that Respondent is either attempting to sell the disputed domain names to Complainant or its competitors, or it is using confusingly similar domain names to attract users for commercial gain by seeking to sell the domains to the general public. As such, it is determined that the domain names have been registered and used in bad faith under Policy ¶¶ 4(b)(i) and (iv).
Complainant further claims that Respondent has not made any legitimate, active use of the resolving webpages associated with the disputed domain names. When a respondent fails to make an active use of a domain name, being the owner of the domain name while a different entity hosts links or advertisements on the resolving page indicates bad faith on the part of the respondent. See Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (finding that it makes no difference that a respondent contends that the advertisements in this case were “generated by the parking company,” the respondent still registered and used the disputed domain name in bad faith). As noted above, Complainant provides screenshots of the resolving webpages associated with the domain names, all of which resolve to parked webpages hosted by the concerned registrar. Based on this evidence, the Panel holds that Respondent has acted in bad faith under Policy ¶ 4(a)(iii).
Finally, Respondent has engaged in a pattern of bad faith registration of domain names that are confusingly similar to trademarks in which Respondent has no rights. Policy ¶ 4(b)(ii). The registration of a series of fourteen domains which copy Complainant’s marks constitutes a pattern of conduct by Respondent. Marriott International, Inc. v. Stealth Commerce d/b/a Telmex Management Services, FA 109746 (Forum, May 28, 2002) (by registering the domains themarriotthotel.com, theramadahotel.com, and ritzplazahotel.com, “Respondent has engaged in a pattern of bad faith registration and use of domain names containing famous brands….”). This pattern further supports the conclusion that Respondent acted in bad faith.
Based upon the arguments and evidence submitted and given the lack of any response, evidence, or other submission by Respondent, the Panel finds that the disputed domain names were registered and are being used in bad faith 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 <freeportmcmoranlng.com>, <freeportmcmoranlng.info>, <freeportmcmoranlng.net>, <freeportmcmoranlng.org>, <mainpassfreeportmcmoran.com>, <mainpassfreeportmcmoran.info>, <mainpassfreeportmcmoran.net>, <mainpassfreeportmcmoran.org>, <mainpassfreeportmcmoranlng.com>, <mainpassfreeportmcmoranlng.info>, <mainpassfreeportmcmoranlng.net>, <mainpassfreeportmcmoranlng.org>, <freeportlngexport.info>, and <freeportlngexport.org> domain names be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: September 18, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page