Cargill, Incorporated v. Sales Office / cargilbrasil
Claim Number: FA1612001705689
Complainant is Cargill, Incorporated (“Complainant”), represented by Patrick J. Gallagher of Norton Rose Fulbright US LLP, Minnesota, USA. Respondent is Sales Office / cargilbrasil (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cargilbrasil.com>, registered with Wild West Domains, 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 December 2, 2016; the Forum received payment on December 2, 2016.
On December 5, 2016, Wild West Domains, LLC confirmed by e-mail to the Forum that the <cargilbrasil.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 December 8, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 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@cargilbrasil.com. Also on December 8, 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 January 6, 2017 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink 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 is a global provider of food, agricultural, financial, and industrial products and services. Complainant has used CARGILL and related marks in connection with this business since 1865, and holds hundreds of registrations for the marks in the United States and other jurisdictions. Complainant has rights in the CARGILL mark based upon registration with the United States Patent and Trademark Office (“USPTO”) and other trademark agencies throughout the world (e.g., Reg. No. 880,665, registered Nov. 11, 1969). Respondent’s <cargilbrasil.com> is identical or confusingly similar, as it incorporates the CARGILL mark in its entirety, less one “L,” and merely differing through the addition of the geographic term “brasil” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not and has never been commonly known by the disputed domain name, nor has Respondent received or requested any authorization, permission, or license from Complainant to use the CARGILL mark in any way. Respondent’s <cargilbrasil.com> resolves to a parked/inactively held webpage and fraudulent offers to contract business on behalf of Complainant have been sent from an email address associated with the disputed domain name. Such use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and is using <cargilbrasil.com> in bad faith. Respondent is using the disputed domain name in connection with a fraudulent impersonation of an employee of Complainant. Such activity must be considered bad faith registration and use of the disputed domain name. Further, Respondent’s inactive holding of the domain name incorporating the famous CARGILL mark is evidence of bad faith under Policy ¶ 4(a)(iii). Additionally, due to the famous nature of Complainant’s mark, Respondent had actual or constructive notice of the mark when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <cargilbrasil.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 on registration of the mark with the USPTO (e.g., Reg. No. 880,665, registered Nov. 11, 1969). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel therefore holds that Complainant’s registration of the CARGILL mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Additionally, Complainant claims that Respondent’s <cargilbrasil.com> is identical or confusingly similar, as it incorporates the CARGILL mark in its entirety, less one “L,” and merely differing through the addition of the geographic term “brasil” and the gTLD “.com.” The addition of a geographic term and a gTLD also does not adequately distinguish a domain name from a complainant’s mark in a Policy ¶ 4(a)(i) analysis. See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Further, where one letter of a mark is omitted, such an alteration is typically not seen as distinguishing. See Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015) (holding that “Changing a single letter (especially when it is the final letter) is a minor enough change to support a finding of confusing similarity under Policy ¶ 4(a)(i).”). Therefore, the Panel agrees that Respondent’s <cargilbrasil.com> is identical or confusingly similar to the CARGILL mark under 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 the disputed domain name as it is not commonly known by <cargilbrasil.com>, nor has Respondent been authorized by Complainant to use the CARGILL mark. The WHOIS information of record identifies Respondent as “Sales office” with “cargilbrasil.” There is no additional information in the record to corroborate that Respondent is commonly known by “cargilbrasil.” Where a response is lacking, the absence of evidence beyond WHOIS information can be used to determine a respondent is not commonly known by a disputed domain name. See Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”). Additionally, lack of evidence in the record to indicate that a respondent had been authorized to register a domain name using complainant’s mark can be evidence of a lack of rights or legitimate interests in a domain. See Navistar Int’l Corp. 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). The Panel, therefore, finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in <cargilbrasil.com> is evinced by its failure to use the domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to provide an email address to masquerade as Complainant. Specifically, emails have been sent from the email accounts <eduardo_xambre@cargillbrasil> and <info@cargillbrasil.com> purportedly from an employee of Complainant’s Brazil location. Use of a disputed domain name to send emails purportedly on behalf of a complainant does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”). The Panel finds Respondent’s use of the disputed domain as an email suffix in furtherance of a fraudulent scheme to pass itself off as an agent of Complainant and attempt to fraudulently contract business is not a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant also contends that Respondent is not making active use of the disputed domain name. Respondent’s <cargilbrasil.com> resolves to a parked webpage with information regarding and a link to the website builder "Zoho Sites." Inactive holding supports a finding that a respondent does not have rights or legitimate interest in the domain name. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question). Accordingly, the Panel finds Respondent’s inactive holding of the disputed domain name evinces its lack of rights or legitimate interests in the disputed domain name.
Complainant has proved this element.
Complainant argues that Respondent is using the disputed domain name to masquerade as Complainant through fraudulent emails associated with <cargilbrasil.com>. Emails sent from the <eduardo_xambre@cargillbrasil> and <info@cargillbrasil.com> addresses have been used to solicit fraudulent orders of goods and include a signature block including the name “Eduardo Xambre” and the entity name “Cargill Agricola S.A.” Complainant asserts it has an employee by that name, and does business in Brazil as “Cargill Agricola S.A.,” but that the employee did not send the emails in question. Complainant points to the fact that the WHOIS record for the disputed domain originally listed registrant’s email as <eduardoxambre@hotmail.com> as further evidence linking Respondent to the fraudulent emails.. Such fraudulent behavior is evidence of bad faith. See SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA14009001581255 (Forum Oct. 29, 2014) (“The Panel finds that Respondent’s use of the domain name’s e-mail suffix for fraudulent purposes illustrates Policy ¶ 4(a)(iii) bad faith.”); see also Cargill, Incorporated v. John Doe as Holder of Domain Name <cargillagricola.com>, FA 1678480 (Forum July 19, 2016) (a recent case with nearly identical facts to the present case where the respondent was found to have registered and used the disputed domain in bad faith); Cargill, Incorporated v. Eduardo Xambre FA 1699721 (Forum Nov. 21, 2016) (finding that the respondent’s use of the disputed domain to send fraudulent emails impersonating the complainant demonstrated bad faith registration and use under Policy ¶ 4(a)(iii)). The Panel therefore finds that Respondent’s use of the disputed domain name is in bad faith under Policy ¶ 4(a)(iii).
Complainant also argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the CARGILL mark. Complainant argues that Respondent’s inclusion of the entire CARGILL mark in the disputed domain name indicates that Respondent had actual knowledge of Complainant's mark and rights. Complainant contends that Respondent’s use in the fraudulent emails of goods that overlap with and are related to Complainant’s goods is further evidence of its knowledge. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant further contends that Respondent’s registration and inactive holding of a domain name incorporating its famous mark constitutes bad faith. As noted above, Respondent’s <cargilbrasil.com> resolves to a parked webpage. Failure to make active use of a domain name can be evidence of bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); See also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). The Panel agrees and finds Respondent is acting in bad faith under Policy ¶ 4(a)(iii).
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 <cargilbrasil.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: January 18, 2017
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